Digital Law Online: Notice and Takedown and Putback

To balance the safe harbor protections given service providers, Congress developed notice-and-takedown procedures, detailed in Subsections 512(c)(3), {FN79: 17 U.S.C. §512(c)(3)} 512(f), {FN80: 17 U.S.C. §512(f)} and 512(g). {FN81: 17 U.S.C. §512(g)} These procedures provide an alternative to a copyright owner going to court to get a temporary order requiring a service provider to remove allegedly-infringing material from that service provider’s system.

When an infringing digital work is available on the Internet, time is of the essence in blocking public access to it. If it is not blocked quickly, additional copies can be made at Internet sites all over the world. Even an expedited request for a temporary order blocking the work may take far too long. One thing discussed during the formulation of Section 512 was the idea of a specialized tribunal – “cyber magistrates” – that could quickly determine if material on the Internet was infringing and order its removal. While that could be done by having administrative law judges in the Copyright Office, since the Copyright Office is under the Library of Congress (which is part of the legislative branch), it was felt that it would be too much of a distortion of the Constitution’s separation of powers to have a judicial function performed by an administrative agency within the legislature.

Instead, Congress instituted a “voluntary” notice-and-takedown system (perhaps less than voluntary, because a service provider has to participate in it in order to take advantage of all the safe harbors except for “mere conduit”) so that allegedly-infringing material is removed quickly, and then any infringement can be adjudicated in a copyright infringement suit.

The notice-and-takedown system starts with a service provider designating an agent to receive notices.

The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its Web site in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:

(A) the name, address, phone number, and electronic mail address of the agent.

(B) other contact information which the Register of Copyrights may deem appropriate.

The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory. {FN82: 17 U.S.C. §512(c)(2)}

This is done by filing a simple form with the Copyright Office. Once that is done, copyright owners who believe that their works are available on a service provider’s system can send a notice to that service provider at the address available in an online database on the Copyright Office’s Web site. Not just any allegation of infringement is a proper notice. Congress spelled out particular information that the notice must contain.

To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. {FN83: 17 U.S.C. §512(c)(3)}

It is important that the copyright owner clearly identify the copyrighted work that is alleged to be infringing, so that the service provider’s subscriber can determine whether it is infringing or not, as required in clause (ii). It is equally important that the copyright owner particularly point out where the service provider can find the alleged infringing material. General allegations of infringement are not sufficient, nor does the service provider have to hunt for the material if it has not been properly identified.

Congress specified that the notice has to substantially comply with the notice requirements above. Minor errors or omissions do not make the notice defective. The important question is whether the notice is sufficient so that the service provider can locate the information to be taken down without undue effort and without taking down substantially more than is alleged to infringe.

The Fourth Circuit, in ALS Scan v. RemarQ Communities, {FN84: 239 F.3d 619, 57 USPQ2d 1996 (4th Cir. 2001)} considered the adequacy of a notice that simply indicated that two newsgroups consisting of many different articles infringed ALS Scan’s copyrights.

In this case, ALS Scan provided RemarQ with information that (1) identified two sites created for the sole purpose of publishing ALS Scan’s copyrighted works, (2) asserted that virtually all the images at the two sites were its copyrighted material, and (3) referred RemarQ to two web addresses where RemarQ could find pictures of ALS Scan’s models and obtain ALS Scan’s copyright information. In addition, it noted that material at the site could be identified as ALS Scan’s material because the material included ALS Scan’s “name and/or copyright symbol next to it.” We believe that with this information, ALS Scan substantially complied with the notification requirement of providing a representative list of infringing material as well as information reasonably sufficient to enable RemarQ to locate the infringing material. {FN85: 239 F.3d at 625, 57 USPQ2d at 2002}

The notice provided by ALS Scan is most likely at the outer limits of meeting the substantial notice requirements, meeting them only because of the particular circumstances of the alleged infringement. The allegedly-infringing material was in two newsgroups – “alt.als” and “alt.binaries.pictures.erotica.als” – whose names themselves indicate that they were related to ALS Scan’s works. Had a copyright owner made an allegation of infringing material in a more general newsgroup – say, “misc.int-property” – the substantial identification of the allegedly-infringing works would have to specify the particular postings in the newsgroup.

Also, because ALS Scan indicated that the allegedly-infringing images contained its name and copyright notice and furnished the service provider with a way to confirm that an image was one of ALS Scan’s, the Fourth Circuit felt that the spirit of the requirement of clause (ii) to identify a particular work or give a list of representative works was substantially met. That would not be the case, for example, if the allegedly-infringing works, such as MP3 files on a music-sharing system, had not contained a copyright notice.

Clause (v) requires the person giving notice to have “a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law” and to state that in the notice. Included within “not authorized by . . . the law” includes uses that are permitted by the various sections of the Copyright Act, including fair use.

Finally, clause (vi) requires that a statement must be included “that the information in the notification is accurate” and “that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.” The second part of the statement must be made “under penalty of perjury.” {FN86: See 18 U.S.C. §1008}

In addition, Section 512(f) establishes a civil liability when there is any misrepresentation in a notice.

Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification,

shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it. {FN87: 17 U.S.C. §512(f)}

The subscriber and the service provider can both sue the content owner making the notice that misrepresents that the material was infringing, and recover not only their damages but also all costs of their suit including their attorneys’ fees. Congress made it clear why this provision was included in Section 512:

This subsection is intended to deter knowingly false allegations to service providers in recognition that such misrepresentations are detrimental to rights holders, service providers, and Internet users. {FN88: Sen. Rep. No. 105-190 at 49}

III.B.3.b. Takedown

Once a service provider wanting to avail itself of the safe harbors of 512(b) (system caching), 512(c) (information residing on systems or networks at the direction of users), or 512(d) (information location tools) knows that its system has infringing material, that service provider must expeditiously remove or block access to the allegedly-infringing material. That knowledge can come from a proper notice from the copyright owner, or when the service provider is aware of facts or circumstances from which infringing activity is apparent. It is not necessary for a service provider to police its users, or guess that something may be an infringement.

Sometimes, a notice from a copyright owner falls short of the requirements for a proper notice. That notice does not give the service provider either actual knowledge of the infringement or awareness of facts or circumstances that suggest infringement.

A notification from a copyright owner or from a person authorized to act on behalf of the copyright owner that fails to comply substantially with the provisions of subparagraph (A) shall not be considered under paragraph (1)(A) in determining whether a service provider has actual knowledge or is aware of facts or circumstances from which infringing activity is apparent. {FN89: 17 U.S.C. §512(c)(3)(B)(i)}

If that were not the rule, then it could be argued that any notification, no matter how insubstantial, would provide knowledge to the service provider of the alleged infringement and require takedown to remain in the safe harbor, thereby gutting the notice requirements. However, a service provider cannot just ignore a faulty notice.

In a case in which the notification that is provided to the service provider’s designated agent fails to comply substantially with all the provisions of subparagraph (A) but substantially complies with clauses (ii), (iii), and (iv) of subparagraph (A), clause (i) of this subparagraph applies only if the service provider promptly attempts to contact the person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially complies with all the provisions of subparagraph (A). {FN90: 17 U.S.C. §512(c)(3)(B)(ii)}

III.B.3.c. Put-back

In general, a service provider is not liable to its subscribers because of the removal or access-blocking when it is done in good faith because it has received a proper notice or knows on its own that the material is infringing.

A service provider shall not be liable to any person for any claim based on the service provider’s good faith disabling of access to, or removal of, material or activity claimed to be infringing or based on facts or circumstances from which infringing activity is apparent, regardless of whether the material or activity is ultimately determined to be infringing. {FN91: 17 U.S.C. §512(g)(1)}

Note that the liability exclusion covers only the “disability of access to, or removal of, material or activity claimed to be infringing.” It does not sanction a wholesale removal of a subscriber’s material, particularly material that does not infringe, unless that is necessary to disable access to, or remove, the allegedly-infringing material.

For a service provider to benefit from that provision, it is necessary that it “takes reasonable steps promptly to notify the subscriber that it has removed or disabled access to the material” and respond to a counter notification from the subscriber whose material was taken down by sending the copyright owner who originally filed the notice a copy of the counter notification, informing him that the service provider “will replace the removed material or cease disabling access to it in 10 business days.” Then the service provider

replaces the removed material and ceases disabling access to it not less than 10, nor more than 14, business days following receipt of the counter notice, unless its designated agent first receives notice from the person who submitted the notification under subsection (c)(1)(C) that such person has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider’s system or network. {FN92: 17 U.S.C. §512(g)(2)(C)}

In other words, the service provider must notify the subscriber of any takedown, and if the subscriber contests the takedown, must restore the material within 14 business days. That provides the copyright owner time to file an infringement suit and get a temporary injunction ordering the continued removal of, or blockage of access to, the alleged infringing material.

The put back procedures were added as an amendment to this title in order to address the concerns of several members of the Committee that other provisions of this title established strong incentives for service providers to take down material, but insufficient protections for third parties whose material would be taken down. {FN93: Sen. Rep. No. 105-190 at 50}

While the service provider has to make a reasonable effort to notify the user of any material taken down, extraordinary effort is not required.

The Committee intends that “reasonable steps” include, for example, sending an e-mail notice to an e-mail address associated with a posting, or if only the subscriber’s name is identified in the posting, sending an e-mail to an e-mail address that the subscriber submitted with its subscription. The Committee does not intend that this subsection impose any obligation on service providers to search beyond the four corners of a subscriber’s posting or their own records for that subscriber in order to obtain contact information. Nor does the Committee intend to create any right on the part of subscribers who submit falsified information in their postings or subscriptions to complain if a service provider relies upon the information submitted by the subscriber. {FN94: Sen. Rep. No. 105-190 at 50}

Similar to the specific requirements for a copyright owner’s notice, there are specific requirements for the counter notification:

To be effective under this subsection, a counter notification must be a written communication provided to the service provider’s designated agent that includes substantially the following:

(A) A physical or electronic signature of the subscriber.

(B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.

(C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.

(D) The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person. {FN95: 17 U.S.C. §512(g)(3)}

Again, Section 512(f) establishes a civil liability when there is any misrepresentation in a notice:

Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification,

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