Under the Digital Millennium Copyright Act (DMCA), internet service providers (ISPs) are protected from liability for the copyright infringements of their users if they adopt certain measures to identify and protect copyrighted works and implement a policy for handling infringers. ISPs cannot have knowledge of specific and identifiable instances of infringement, nor can they be aware of facts or circumstances from which infringing activity is apparent. This “knowledge” arises when an ISP is aware of facts that should be objectively obvious to a reasonable person. Knowledge also arises when an ISP receives a takedown notice from a putative copyright owner. Thus, even if an ISP has some objective knowledge that a user’s copyright may be infringed, if the ISP immediately removes the infringing material upon receipt of a takedown notice, the ISP may still qualify for the exemption from liability under the “safe harbor” provisions of the DMCA. 17 U.S.C. §512. Many ISPs, such as YouTube, have implemented automated copyright notice responses to comply with the notice and takedown requirements, thereby ensuring they are not liable for their users’ potentially infringing activity.

Before a rightsholder decides to file a copyright takedown notice, it is important to be sure that the claim has merit, including determining whether the use of the copyrighted material is allowed under any copyright exceptions, most importantly fair use. (See our earlier article on the key case holding that there is an obligation to assess fair use before sending a takedown notice, Lenz v. Universal Music Corp., 815 F.3d 1145 (9^th Cir. 2015), cert. denied 137 S. Ct. 2263 (2017).)

YouTube will remove a video when it receives a formal DMCA takedown notice from a rightsholder. Additionally, YouTube will put a “strike” on the potentially infringing user account and require the user to complete a course in its online “Copyright School.” After filing the notice YouTube offers two choices for takedown requests; rightsholders can either prevent copies of a video from being reuploaded to YouTube in the future or can request that a video be taken down within seven days. After a user accumulates three strikes, YouTube cancels all the user’s YouTube accounts, takes down all the user’s videos and will not reinstate the user as an account holder. The three-strike system is designed as a meaningful deterrent against knowing infringements.

While the notice and takedown process is essential for the protection of copyright holders, the removal of products or promotional materials under false pretenses from a website like YouTube can have detrimental impacts on a user’s legitimate business interests. Many businesses use YouTube and e-commerce websites to promote their brand, engage with customers and convert viewers into purchasers. In the event of a takedown notice, a user will suffer from the video being removed, from the negative publicity attending the copyright violation labeling, and – if a counter-notification is filed (see below) – possible exposure to harassment from releasing their personal information to the takedown filer.

If the user believes the takedown notice is baseless or fraudulent, they may submit a “counter-notice.” However, counter-notices present a host of complications and risks. First, the user must include their contact information, signature, a statement under penalty of perjury that the material was removed by mistake or misidentification and consent to the jurisdiction of the user’s local federal court. Once the counter-notice is submitted, the rightsholder has two weeks to sue for copyright infringement. If the rightsholder does not sue within this time frame, the video will be restored to YouTube and the strike will be removed from the user’s account. However, if the rightsholder sues, the user’s video will stay off YouTube until the lawsuit is resolved. This process is the only way to remove a strike from a user’s account. During the counter-notice process, users expose themselves to potentially costly litigation, so they must think carefully before filing a counter-notice.

Unfortunately, there is no obvious solution for responding to fraudulent takedown requests. YouTube even recognized the shortcomings in a 2019 case where it sued an individual who was falsely filing takedown notices. See YouTube, LLC v. Brady, 8:19-cv-00353 (D. Neb. 2019). YouTube stated in its complaint that

[f]urther abuse can arise because of the DMCA’s counter notification process. Under the DMCA, users who believe that their content was removed because of an improper takedown notice may ask YouTube to restore the content pending resolution of the question of infringement. To trigger the counter notification process, a user must supply their name, address and phone number to YouTube, provide details of the allegedly wrongful takedown notice and consent to be sued by the original complainant. In accordance with the DMCA, YouTube forwards a copy of complete and valid counter notifications to the original complainant. Instead of using the personal information in a counter notification for purposes of resolving an infringement dispute, abusive complainants may use it for purposes of harassment.

While YouTube has sued a third party for filing fraudulent takedown notices, it is not required to do so under the law.

Fraudulent takedown filers are often difficult to identify, which adds another layer of confusion to the counter-notice process. In the event of an anonymous filer, there are limited options. Users can request a subpoena from YouTube under 512(h)(1) of the Copyright Act, thus requiring YouTube to look into the filer’s identity. The user then has to hope that YouTube discovers the filer’s identity and takes action. Alternatively, the user can take the information from the subpoena to file a claim for misrepresentation under 512(f) of the Copyright Act.

Lutzker & Lutzker will continue to provide updates on DMCA takedown procedures and is available to assist rightsholders and third party users with navigating the DMCA.