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Consider Fair Use Before Sending DMCA Takedown Notice

Logo for YouTube, which was involved in a case illustrating why one must consider fair use before sending a DMCA takedown noticeThis post is based on a recent federal appellate case, Lenz v. Universal Music. That case held that one must consider fair use as a possible defense for an online service provider before sending a takedown notice under the Digital Millennium Copyright Act (DMCA).

DMCA Background

I provided an overview of the DMCA in Terms of Use and the Digital Millennium Copyright Act (DMCA). Quoting a portion of that post:

Enacted in 1998, the DMCA is divided into five Titles. Title II is the Online Copyright Infringement Liability Limitation Act. That Title added Section 512 (Limitations on liability relating to material online) to Title 17 of the United States Code. Section 512 created new limitations on liability in the following areas: transitory communications; system caching; storage of information on systems or networks at direction of users; and information location tools. If a service provider satisfies the requirements of that section, it will not be subject to monetary damages for copyright infringement, and injunctive relief will be restricted.

Section 512(c) (Information Residing on Systems or Networks At Direction of Users) specifies the requirements that have the greatest significance for TOU. Simplified a bit, that section protects service providers if:

  • They do not know about infringing materials on their systems.
  • They do not receive any financial benefit from the infringing activity.
  • And they expeditiously remove or disable access to materials when properly notified of claimed infringement (colloquially, a “takedown notice”).

Furthermore, Section 512(c) requires that the service provider designate an agent to receive takedown notices and specifies, at length, six elements to be included in every notice. These elements pertain to:

  1. Signing the notice.
  2. Identifying the work that was infringed.
  3. Identifying the infringing material.
  4. Providing contact information for the complaining party.
  5. Stating a good-faith belief of infringement.
  6. Stating, under penalty of perjury, that the complaining party is authorized to act on behalf of the copyright owner.
Fair Use Background

Fair use is a defense to copyright infringement. The following is part of my discussion of fair use in “Fair Use”: One Term, Two Different Meanings:

The fair use defense to copyright infringement is set forth in 17 U.S.C. Section 107. It is designed to protect such activities as criticism, comment, news reporting, teaching, scholarship, and research. Section 107 specifies that the determination of whether the use made of a work in any particular case is a fair use will be based on the following factors:

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

There are no mechanical rules for determining how the four factors will be applied. Each case must be decided on its own merits. For example, reproduction of a short poem in its entirety may constitute fair use in an article by a literary critic. On the other hand, reproduction of that same poem solely for circulation among fans of the poet likely would not constitute fair use.

Lenz Video Background

On February 7, 2007, plaintiff Stephanie Lenz uploaded to YouTube a 29-second home video of two of her children in the family kitchen. They were dancing to the song Let’s Go Crazy by Prince.

Upon discovering the video, Universal, Prince’s publishing administrator, sent YouTube a takedown notice. In accordance with statutory requirements, Universal stated that it had a good-faith belief that the video infringed Prince’s copyright. However, Universal did not consider fair use as a possible defense against copyright infringement.

YouTube removed the video on June 5, 2007. However, after extended back-and-forth between Lenz, Universal and YouTube, on June 27, 2007 YouTube reinstated the video pursuant to a counter-notification by Lenz. (She had retained a pro bono lawyer.)

Need to Consider Fair Use

On July 24, 2007, Lenz brought suit against Universal. The trial court denied certain motions for summary judgment by both plaintiff and defendant. The Ninth Circuit Court of Appeals agreed to hear an appeal of those denials.

The Ninth Circuit affirmed the trial court’s denial of the summary judgment motions on September 14, 2015. For this post, the most significant aspect of the court’s opinion is the following.

Copyright holders cannot shirk their duty to consider—in good faith and prior to sending a takedown notification—whether allegedly infringing material constitutes fair use, a use which the DMCA plainly contemplates as authorized by the law.

As a result (at least, for the moment, in the Western U.S.), one must consider fair use before sending a DMCA takedown notice.

Check out all posts about DMCA takedown notices.

Dana H. Shultz, Attorney at Law  +1 510-547-0545  dana [at] danashultz [dot] com
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