DMCA of 1998
INTERNET LAW
Copyright and Trademark infringement
Digital Millennium Copyright Act of 1998
#1 – Question: What is the Digital Millennium Copyright Act of 1998?
Answer: The DMCA, as it is known, has a number of different parts. One part is the anticircumvention provisions, which make it illegal to “circumvent” a technological measure protecting access to or copying of a copyrighted work (see Anticircumvention (DMCA)). Another part gives web hosts and Internet service providers a “safe harbor” from copyright infringement claims if they implement certain notice and takedown procedures.
#2 – Question: What are the DMCA Safe Harbor Provisions?
Answer: In 1998, Congress passed the On-Line Copyright Infringement Liability Limitation Act (OCILLA) in an effort to protect service providers on the Internet from liability for the activities of its users. Codified as section 512 of the Digital Millennium Copyright Act (DMCA), this new law exempts on-line service providers that meet the criteria set forth in the safe harbor provisions from claims of copyright infringement made against them that result from the conduct of their customers. These safe harbor provisions are designed to shelter service providers from the infringing activities of their customers.
If a service provider qualifies for the safe harbor exemption, only the infringing customer are liable for monetary damages; therefore, the service provider’s network through which the infringing customer engaged in the alleged activities is not liable.
#3 – Question: What are the notice and takedown procedures for web sites?
Answer: In order to have an allegedly infringing web site removed from a service provider’s network, or to have access to an allegedly infringing website disabled, the copyright owner must provide notice to the service provider with the following information:
(1) The name, address, and electronic signature of the complaining party [512(c)(3)(A)(i)]
(2) The infringing materials and their Internet location [512(c)(3)(A)(ii-iii)], or if the service provider is an “information location tool” such as a search engine, the reference or link to the infringing materials [512(d)(3)].
(3) Sufficient information to identify the copyrighted works [512(c)(3)(A)(iv)].
(4) A statement by the owner that it has a good faith belief that there is no legal basis for the use of the materials complained of [512(c)(3)(A)(v)].
(5) A statement of the accuracy of the notice and, under penalty of perjury, that the complaining party is authorized to act on the behalf of the owner [512(c)(3)(A)(vi)].
REMOVAL OF INFRINGING CONTENT
*Once notice is given to the service provider, or in circumstances where the service provider discovers the infringing material itself, it is required to expeditiously remove, or disable access to, the material. The safe harbor provisions do not require the service provider to notify the individual responsible for the allegedly infringing materialbefore it has been removed, but they do require notification after the material is removed.
#4 – Question: What defines a service provider under Section 512 of the Digital Millennium Copyright Act (DMCA)?
Answer: A service provider is defined as “an entity offering transmission, routing, or providing connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received” or “a provider of online services or network access, or the operator of facilities thereof.” [512(k)(1)(A-B)] This broad definition includes network services companies such as Internet service providers (ISPs), search engines, bulletin board system operators, and even auction web sites.
There are four major categories of network systems offered by service providers that qualify for protection under the safe harbor provisions:
(1) Conduit Communications include the transmission and routing of information, such as an email or Internet service provider, which store the material only temporarily on their networks. [Sec. 512(a)]
(2) System Caching refers to the temporary copies of data that are made by service providers in providing the various services that require such copying in order to transfer data. [Sec. 512(b)]
(3) Storage Systems refers to services which allow users to store information on their networks, such as a web hosting service or a chat room. [Sec. 512(c)]
(4) Information Location Tools refer to services such as search engines, directories, or pages of recommended web sites which provide links to the allegedly infringing material. [Sec. 512(d)]
#5 – Question: What does a service provider have to do in order to qualifyfor safe harbor protection?
Answer: In addition to informing its customers of its policies (discussed above),a service provider must follow the proper notice and takedown procedures (discussed above – #3 Removal of infringing content) and also meet several other requirements in order to qualify for exemption under the safe harbor provisions.
In order to facilitate the notification process in cases of infringement, ISPs which allow users(WEBSITE OWNERS) to store information on their networks, such as a web hosting service, must designate an agent that will receive the notices from copyright owners that its network contains material which infringes their intellectual property rights. The service provider must then notify the Copyright Office of the agent’s name and address and make that information publicly available on its web site. [512(c)(2)]
Finally, the service provider must not have knowledge that the material or activity is infringing or of the fact that the infringing material exists on its network. [512(c)(1)(A)], [512(d)(1)(A)]. If it does discover such material before being contacted by the copyright owners, it is instructed to remove, or disable access to, the material itself. [512(c)(1)(A)(iii)], [512(d)(1)(C)]. The service provider must not gain any financial benefit that is attributable to the infringing material. [512(c)(1)(B)], [512(d)(2)].
#6 – Question: What are the criteria a service provider must satisfy in order to qualify for safe harbor protection under Subsection 512(a) of the Digital Millennium Copyright Act?
Answer: Subsection 512(a) provides a “safe harbor” for service providers in regard to communications that do not reside on the service providers system or network, but merely pass through the system or network. Any copies of the communications on the system must be temporary, i.e., intermediate or transient.
A service provider must satisfy the following critical elements in order to qualify for the “safe harbor” or protection from liability provided by subsection 512(a) (note that subsection 512(k)(1)(A) defines “service provider” as used in subsection 512(a)):
(a) The service provider is an entity offering the transmission, routing, or providing of connections for digital online communications [512(k)(1)(A)];
(b) The service provider did not initiated the transmission of the material [512(a)(1)]
(c) The transmission, routing, provision of connections, or storage is carried out by an automatic technical process [512(a)(2)];
(d) The Internet user, not the service provider, must select the origination and destination points of the communication [512(a)(3) and 512(k)(1)(A)];
(e) The service provider must not modify the communication selected by the Internet user [512(a)(5)];
(f) The communication is transmitted “through” the system or network of the service provider [512(a)(2)];
(g) No copy of the communication is maintained on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients [512(a)(4)]; and
(h) No copy is maintained on the system or network in a manner ordinarily accessible to anticipated recipients for a longer period than is reasonably necessary for the transmission, routing, and provision of connections [512(a)(4)].
#7 – Question: Does a service provider have to notify its users about its policies regarding the removal of materials?
Answer: To qualify for exemption under the safe harbor provisions, the service provider must give notice to its users of its policies regarding copyright infringement and the consequences of repeated infringing activity. [512(i)(1)(A)] The notice can be a part of the contract signed by the user when signing up for the service or a page on the service provider’s web site explaining the terms of use of their systems. While there are no specific rules about how this notice must be made, it must be “reasonably implemented” so that subscribers and account holders are informed of the terms. [512(i)(1)(A)]
#8 – Question: Does a copyright owner have to specify the exact materials it alleges are infringing?
Answer: Proper notice under the safe harbor provisions requires the copyright owners to specifically identify the alleged infringing materials, or if the service provider is an “information location tool” such as a search engine, to specifically identify the links to the alleged infringing materials. [512(c)(3)(iii)], [512(d)(3)].
The provisions also require the copyright owners to identify the copyrighted work, or a representative list of the copyrighted works, that is claimed to be infringed. [512(c)(3)(A)(ii)]. Rather than simply sending a letter to the service provider that claims that infringing material exists on their system, these qualifications ensure that service providers are given a reasonable amount of information to locate the infringing materials and to effectively police their networks. [512(c)(3)(A)(iii)], [512(d)(3)].
However, in the recent case of ALS Scan, Inc. v. Remarq Communities, Inc.,the court found that the copyright owner did not have to point out all of the infringing material, but only substantially all of the material. The relaxation of this specificity requirement shifts the burden of identifying the material to the service provider, raising the question of the extent to which a service provider must search through its system. OSP customers should note that this situation might encourage OSP’s to err on the side of removing allegedly infringing material.
#9 – Question: Can a copyright owner find out the identity of the individual responsible for the allegedly infringing material?
Answer: The safe harbor provisions permit a copyright owner to subpoena the identity of the individual allegedly responsible for the infringing activities. [512(h)] Such a subpoena is granted on the condition that the information about the individual’s identity will only be used in relation to the protection of the intellectual property rights of the copyright owner. [512(h)(2)(C)]
The DMCA subpoena provision does not apply to requests for the identities of users of ISP conduit 512(a) services, but only to users of hosting or linking, for which a takedown may be sent under 512(c)(3)(A). Thus DMCA subpoenas cannot be used to find the identities of users engaged in peer-to-peer filesharing. Recording Industry Assoc. of America v. Verizon Internet Svcs., Inc.
#10 – Question: What happens if an individual is found to repeatedly infringe?
Answer: The safe harbor provisions require the service provider to include in its copyright infringement policies a termination policy that results in individuals who repeatedly infringe copyrighted material being removed from the service provider networks. [512(i)(1)(A)] This termination policy must be made public in the terms of use that the service provider includes in its contracts or on its web site.
#11 – Question: What are the provisions of 17 U.S.C. Section 512(c)(3) & 512(d)(3)?
Answer: Section 512(c)(3) sets out the elements for notification under the DMCA. Subsection A (17 U.S.C. 512(c)(3)(A)) states that to be effective a notification must include:
(1) a physical/electronic signature of a person authorized to act on behalf of the owner of the infringed right;
(2) identification of the copyrighted works claimed to have been infringed;
(3) identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed;
(4) information reasonably sufficient to permit the service provider to contact the complaining party (e.g., the address, telephone number, or email address);
(5) a statement that the complaining party has a good faith belief that use of the material is not authorized by the copyright owner; and
(6) a statement that information in the complaint is accurate and that the complaining party is authorized to act on behalf of the copyright owner. Subsection B (17 U.S.C. 512(c)(3)(B)) states that if the complaining party does not substantially comply with these requirements the notice will not serve as actual notice for the purpose of Section 512.
Section 512(d)(3), which applies to “information location tools” such as search engines and directories, incorporates the above requirements; however, instead of the identification of the allegedly infringing material, the notification must identify the reference or link to the material claimed to be infringing.
#12 – Question: Can an online service provider (OSP) be held contributorily liable for acts of trademark infringement by one of its users?
Answer: Under section 512(c) of the DMCA an OSP will not be held liable for instances of copyright infringement so long as the OSP satisfies certain statutory requirements. However, there is no equivalent legislation pertaining to trademark infringement, and given the paucity of caselaw concerning liability of OSPs in such instances, it remains an open question as to whether or not an OSP could, or should, be held liable for acts of trademark infringement by its users.
In trademark law, contributory liability exists when a manufacturer or distributor intentionally induces another party to infringe a valid trademark, or when it continues to supply products to a party that it knows, or has reason to know, is using the products to engage in trademark infringement. Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982).
Lower courts have since disagreed somewhat over what exactly satisfies the “know, or has reason to know” standard. In one case, Fonovisa v. Cherry Auction, 76 F.3d 259 (9th Cir. 1996), the Ninth Circuit Court of Appeals held that a flea market operator could not ignore, with impunity, the actions of its vendors who were blatantly engaging in trademark infringement.
In another case, Gucci America, Inc. v. Hall & Associates, 135 F. Supp. 2d 409 (S.D.N.Y. 2001), the District Court for the Southern District of New York refused to grant an ISP’s motion to dismiss in a case involving instances of trademark infringement occurring on a subscriber’s website hosted by the ISP. There the plaintiff allegedly had sent two e-mails to the ISP regarding the alleged infringement, but the ISP failed to take any action.
Collectively, these few cases suggest that an OSP could be found contributorily liable for acts of trademark infringement. In any such suit, one of the main issues would be to what extent the OSP knew, or should have known, of the infringing acts? That is to say, what did the OSP do to police its service, or what should it have done? And more specifically, if the plaintiff attempted to notify the OSP of the infringing acts, what kind of notice would suffice? Under section 512 of the DMCA, the notice requirements are made quite clear. As the law stands now, however, that issue remains far less clear in the area of trademark infringement.