The letter raises substantive questions regarding provisions in the current draft proposal of the controversial Anti-counterfeiting Trade Agreement (or “ACTA”). The letter also questions the Administration’s reasons for negotiating ACTA behind closed doors without public participation and treating ACTA as an Executive Agreement (signed only by the President) opposed to a Treaty (executed by President and ratified by 2/3 vote in the US Senate).
Comments Off Posted in: Links on October 29, 2010
It’s been three years since Stephanie Lenz posted this home video to YouTube which depicts her then 13-month-old child rocking out to the Prince song “Let’s Go Crazy.” It’s a 29-second video of a toddler bouncing around to fuzzy-sounding music playing from small bookshelf speakers in the background. After the video had been up for about four months, YouTube took it down pursuant to a DMCA takedown notice they received from UMG, the holder of the copyright. With the help of the EFF, Lenz sued UMG and asked the court to declare that UMG violated the DMCA when it sent the original takedown notice to YouTube.
This case raises some interesting DMCA-related questions. First, are copyright owners required to take fair use into account before sending a DMCA takedown notice? Second, if fair use is not taken into account, can copyright owners be liable for damages for “materially misrepresent[ing] … that material or activity is infringing” under §512(f)?
The district court answered the first question affirmatively in August 2008, stating that “in order for a copyright owner to proceed under the DMCA with 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,’ the owner must evaluate whether the material makes a fair use of the copyright.” (Order Denying MTD, Pg. 6). The court also held that “[a]n allegation that a copyright owner acted in bad faith by issuing a takedown notice without proper consideration of the fair use doctrine … is sufficient to state a misrepresentation claim under §512(f).” (Order Denying MTD, Pg. 6). This was not an obvious conclusion for the court to reach—due, in part, to the nature of fair use and some controlling precedent from the Ninth Circuit.
An official finding that a use of a work is a “fair use” is a legal determination by a judge after weighing the four fair use factors in litigation. This reality sometimes makes predicting whether a use of a copyrighted work will ultimately be adjudicated as a fair use challenging prior to filing a lawsuit. Given the range of user creativity that YouTube so readily inspires, the addition of even a small portion of a copyrighted work to another’s original expression can sometimes make this determination extraordinarily difficult.
The court addressed this concern in the opinion noting that “there are likely to be few [cases] in which a copyright owner’s determination that a particular use is not a fair use will meet the requisite standard of subjective bad faith required to prevail in an action for misrepresentation under §512(f).” (Order Denying MTD, Pg. 6). Based on this somewhat wishy washy language, it seems that an instance where a failure to identify a fair use might qualify for §512(f) damages is when the use is so unequivocal fair that it’s obvious to the person reviewing the use before sending a notice.
Fast forward to last week. Nearly two years after this decision (and extensive discovery), Lenz and UMG filed motions for summary judgment (Lenz’s Motion, UMG’s Motion) on whether UMG violated the DMCA takedown notice requirements under §512(f). As articulated in the statute, 512(f) prohibits “[a]ny person from knowingly materially misrepresent[ing] … that material or activity is infringing” and awards “any damages, including attorneys’ costs and fees, incurred by the alleged infringer … who is injured by such misrepresentation.”
The Copyright Act doesn’t state a definition for “knowingly materially misrepresents.” Under these circumstances a judge usually interprets the proper meaning. Since the DMCA was enacted, two prominent cases have issued opinions that interpreted the phrase “knowingly materially misrepresents” differently: Online Policy Group v. Diebold, 337 F.Supp.2d 1195 (N.D. Cal. Sept. 30, 2004) and Rossi v. MPAA, 391 F.3d 1000 (9th Cir. Dec. 1, 2004). Note here that the Rossi case was decided by the Ninth Circuit; consequently, this means the Rossi interpretation is the controlling precedent in the Lenz case. Still, it’s important to see the distinctions illustrated by these rulings.
The Diebold court interpreted the term “knowingly” to mean that “a party actually knew or should have known if it acted with reasonable care or diligence, or would have had no substantial doubt had it been acting in good faith.” (Diebold, 337 F.Supp.2d at 1204). This has been termed the “objective standard” and is the more liberal interpretation–obviously, if a party “should have known,” then the onus is far greater on rights holders to correctly identify instances of fair use.
In contrast, the Ninth Circuit in Rossi took a more conservative approach by juxtaposing the phrases “good faith,” as used in §512(c)(3), with “knowing misrepresentation” and reasoned that §512(f) requires some literal form of knowledge, i.e., that the copyright owner is actually aware of facts that legally transform an allegation of copyright infringement into a false allegation of copyright infringement, otherwise copyright owners could be liable for simple mistakes. (Rossi, 391 F.3d at 1004).
Based on the subjective standard, Lenz (and the EFF) now has to show that the UMG employee(s) who reviewed the video prior to sending the takedown notice were subjectively aware that the video was a fair use prior to sending the notice. However, in the Lenz/EFF memorandum filed last week, she states this:
The undisputed evidence demonstrates Universal failed to form a good faith belief that the Video is infringing, either because it never considered whether it was a fair use and therefore authorized by law, or because it chose to be willfully blind to that fact. (Lenz MSJ, Pg. 8).
I think this excerpt is a fair, albeit very brief, summary of Lenz’s factual framework in support of her motion—the unredacted portions at least. This framing definitely supports the objective standard in Diebold, where a defendant could be liable when s/he should have known the video was likely a fair use; but, it feels factually light under the subjective Rossi standard, were they have to actually be aware the video was likely a fair use. Recall that the Ninth Circuit explicitly rejected the objective standard. (Rossi, 391 at 1004 (“A copyright owner cannot be held liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake. Rather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner.”)).
So what now? Back in the 2008 ruling on fair use, the court appeared poised to rule that this video was an unequivocal instance of fair use worthy of §512(f) damages. If that is the outcome on the current motions, I’m not sure the Ninth Circuit will agree based on their narrow circumscription of §512(f) misrepresentations. Unfortunately, if the district court rules this is not a violation, it removes almost all the teeth from §512(f), as copyright owners would then have a statutory incentive to issue takedown notices blindly, without looking carefully at the content in question, and, potentially, without repercussion.
However resolved, this issue smells ripe for appeal.