MVS Filewrapper® Blog: New Best Practices for DMCA Takedown Notices from the Department of Commerce

Post by Dan Lorentzen

Under the Digital Millennium Copyright Act (DMCA), online service providers are immunized from liability for copyright infringement so long as they comply with two requirements intended to protect the rights of copyright owners.  Under the DMCA, online service providers include, for example, internet service providers, email providers, news providers, entertainment providers, search engines, e-shopping sites, e-finance or e-banking sites, e-health sites, e-government sites, and Wikipedia.  Congress enacted the DMCA in 1998, which amended the Copyright Act to address issues raised by a rapidly developing Internet by updating rights, exceptions, and enforcement mechanisms.  In order to qualify for immunity under the DMCA, an online service provider must (1) accommodate and not interfere with standard technical measures; and (2) adopt and reasonably implement a policy of addressing and terminating accounts of users who are found to be "repeat infringers"—commonly known as the "takedown" notice process. 

The U.S. Department of Commerce recently released a document titled "DMCA Notice-and-Takedown Processes:  List of Good, Bad and Situational Practices." While the document does not create any new policies or rules, it does set out "good," "bad," and "situational" practices for both senders and recipients of copyright "takedown" notices under the DMCA.  The document is intended to help improve the efficiency of the handling and processing of both "takedown" notices and counter-notices.  Although it is not comprehensive, the document is a good resource for any copyright owner or online service provider looking for basic practical guidance on making or dealing with "takedown" notices. 

The "DMCA Notice-and-Takedown Processes:  List of Good, Bad and Situational Practices" document is available here.  Additional information about copyrights and DMCA "takedown" notices is available here, here, and here.  

MVS Filewrapper® Blog: The Ongoing Battle of Copyright Protection and Pre-1972 Sound Recordings

Federal Copyright Law generally protects works that are fixed in a tangible medium from unauthorized use, including copying, performance, exhibition, and broadcasting.  However, sound recordings from before 1972 are treated uniquely under the law—a situation that has resulted in real legal problems.


When enacted, the Federal Copyright Law preempted any state rights relating to copyright protection.  However, because the Copyright Act of 1909 failed to provide protection for sound recordings, and protection for sound recordings was not incorporated into the Federal Copyright Law until 1972, protection for sound recordings prior to 1972 is governed by various state law doctrines. 


In particular, the Federal Copyright Law retains several "safe harbors" concerning certain acts relating solely to sound recordings, such as broadcasting pre-1972 sound recordings over the radio. § 114 of the current Copyright Act allows for broadcast transmission of a protected sound recording.  However, some copyright holders are attempting to hold broadcasting companies liable for "unauthorized broadcast transmission" of pre-1972 sound recordings under various state misappropriation laws. A class action suit filed in September, 2013 in the Central District of California alleges that SiriusXM refuses to obtain licenses for transmission of pre-1972 recordings in violation of common law and California law, seeking payment for the use of thousands of songs.  Two additional class action suits have been filed in the Southern District of New York and the Southern District of Florida, alleging violation of New York and Florida law, respectively.  A fourth suit has also been filed in California state court by Capitol Records, Sony Music, UMG Recordings, Warner Music, and ABKCO Music. 

Currently, the federal courts are split on whether a state's misappropriation law establishes a cause of action to a copyright holder with a pre-1972 sound recording.  The outcome of these cases may help to clarify what protection is afforded to pre-1972 sound recordings, and under what law.

Copyright Office issues new DMCA exemptions: iPhone jailbreaking, noncommercial use of DVD snippets

Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA").  As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works.  For example, it is arguably a violation of the DMCA to use a program to "break" the content scrambling system ("CSS") encryption used for standard DVDs in order to make a copy of the DVD, even if making such a copy would otherwise be considered fair use under copyright law (although a recent decision by the Fifth Circuit arguably holds to the contrary).  The purpose of the exemptions is to adapt to any unintended consequences of the DMCA, such that lawful uses of copyrighted works are not unduly restricted.

Today, the Copyright Office issued the list of exemptions in this go-around of the triennial rulemaking process.  Included among the newly-granted exemptions are circumvention of the above-mentioned CSS encryption to use "short portions" in new works for the purpose of criticism or comment, when the use is educational, noncommercial, or for documentary filmmaking.  This is an important exemption, as it arguably covers the majority of videos on sites such as YouTube where short portions of movies, televisions shows, and the like are posted as a portion of a remix or other creative work.

In addition, unlocking a mobile phone to allow software to be run (commonly called "jailbreaking") is also exempted from the DMCA.  Notably, this does not prevent phone providers (such as Apple) from placing the restrictions on a phone in the first instance, it simply makes it not a DMCA violation to remove the restrictions.

The Office also permitted circumvention of prohibitions on "read-aloud" functionality of e-books.  Some e-books have been sold with a limitation that prevents the user from using their e-reader's "read-aloud" function, essentially turning the e-book into an audio book.  This is now not a violation of the DMCA anti-circumvention provisions.

The Copyright Office revisits these exemptions every three years.  Click below for the full text of the exemptions granted, or head to the Copyright Office website for the full release.


Tenth anniversary of the Digital Millenium Copyright Act

On October 28, 1998, President Clinton signed the Digital Millenium Copyright Act into law.  The Act is probably best known for two of its provisions:  (1) the anti-cirumvention provsion, which prohibits circumventing a "technological measure that effectively controls access to" a copyrighted work, and (2) the online "safe harbor" provision, which generally insulates parties that host material online from liability for infringement provided they follow the prescribed notice and takedown procedure. 

Depending on your point of view, the success of these two provisions are often seen to be inversely correlated:  content providers generally favor the anti-circumvention provsion, as it has permitted the maintenance of various DRM schemes, such as CSS for DVDs, FairPlay on iTunes, and the various DRM systems associated with Blu-ray discs (such as AACS and BD+), although it has not prevented those schemes from being overcome by various programmers.  The safe harbor provisions have been largely successful from the perspective of online companies, having fostered the development and growth of sites hosting user-submitted content, such as YouTube, although it has not been without its issues, such as the ongoing litigation between Viacom and YouTube regarding whether YouTube may be liable for user-posted content even if the notice-and-takedown procedures are followed.

Several sites are discussing the DMCA on its anniversary:

Federal Circuit addresses scope of immunity waiver for copyright and DMCA claims

In a decision Friday, the Federal Circuit affirmed a decision from the United States Court of Federal Claims dismissing a copyright holder's claims for lack of jurisdiction on the ground that the Government had not waived sovereign immunity.  The suit arose from alleged copyright infringement and an alleged violation of the Digital Millennium Copyright Act of 1998 (DMCA).

The Federal Circuit found that the CFC's decision did not contain any reversible legal error in determining that there was no waiver of sovereignty in either the copyright infringement claim or the claim of a violation of the DMCA.  Specifically, the court held that because the author of the copyrighted software was, by virtue of his employment in the Air Force's Manpower User Group, in a position to "order, influence, or induce use" of the software by the Government, thereby placing the suit outside the scope of waiver provided in 28 U.S.C. § 1498(b).  Further, the government has not waived immunity for DMCA claims.  As a result, the court affirmed the dismissal of the case.

More regarding Blueport Co. v. United States after the jump.


Wall Street Journal on Viacom v. YouTube

Walter Mossberg of the Wall Street Journal has a column discussing the Viacom v. YouTube case (previously blogged about here). Mr. Mossberg thinks the problem is not confined to the particular dispute between Viacom and YouTube/Google, but rather is indicative of a need for greater guidance in copyright law from Congress. The Digital Millennium Copyright Act (DMCA), which was supposed to help to bring copyright law into the digital age, was passed in 1998. Many technologies available now were not even conceived of in 1998, so Mr. Mossberg points out that there is uncertainty with regard to what is and is not permissible under copyright law and the DMCA with regard to these new technologies.

More thoughts on these issues after the jump.


Viacom sues YouTube, Google for copyright infringement

In a press release today, Viacom, owner of the MTV and Comedy Central television networks (among others), announced it is suing YouTube and its parent company, Google, for copyright infringement. The lawsuit seeks over $1 billion in damages. The parties had been in negotiations for YouTube/Google to have a license to provide Viacom's content on YouTube, but negotiations broke down, and in February, Viacom sent takedown notices under the Digital Millennium Copyright Act (DMCA) to YouTube, asking YouTube to remove 100,000 of Viacom's video clips from the site.

More details of the case and some analysis of the issues involved after the jump.


Are wedding receptions full of copyright infringers?

Maybe, if you ask Richard Silver. Mr. Silver claims to have invented the dance known as the "Electric Slide" at a disco in 1976. He registered a copyright on his performance of the dance in 2004.

While Mr. Silver's claims may seem dubious (such as, for example, his claims on his website that he also invented break dancing and "the robot" dance), he has, thus far, been vigorous in using copyright law to defend what he perceives are his rights in the dance. For example, he entered into an agreement with Oprah Winfrey's production company, Harpo Productions, Inc., for the Electric Slide to be performed on an episode of the Oprah Winfrey Show in 2006. He has also attempted to get the Ellen DeGeneres Show to pay for a segment that aired in 2006 where Ellen and a group of dancers taught the Electric Slide to her class reunion.

In addition to these, using the power of the Digital Millennium Copyright Act (DMCA), Mr. Silver has sent takedown notices to YouTube, the popular video hosting site recently purchased by Google, requesting that all videos depicting the Electric Slide be taken down as infringing his copyright. Some whose videos were taken down have rehosted their videos elsewhere, and plan on fighting back against Mr. Silver.

Regardless of the merits of Mr. Silver's claims, his case shows the potential outer reaches of the DMCA, and, if Mr. Silver's claims prove to be unfounded, the potential abuse of the DMCA by an individual with a copyright registration.

Also, maybe stick to the Chicken Dance at the next wedding reception you attend.

Update (11:10 am): As noted by Public Knowledge, the choreography may have passed into the public domain for failure to timely file the copyright registration. This is a possibility, depending on the facts surrounding the creation of the dance, and one more argument for those on the wrong end of a complaint by Mr. Silver.

Prepaid cellular phone seller sues over DMCA exception

TracFone Wireless, the largest seller of prepaid cellular phone service in the United States, has sued the Librarian of Congress and Register of Copyrights, alleging that one of the DMCA exemptions granted last month is unlawful.  Specifically, TracFone is upset about the exemption permitting cellular phone users to "unlock" their phones in order to use them with another service provider.

TracFone makes money by selling phones at fairly low prices and charging more for cellular service to make up the losses on the phone sales.  TracFone has sued companies that "unlocked" their phones in the past, alleging violation of the DMCA.

In its complaint, TracFone alleges that the exemption violates the Administrative Procedure Act, the Due Process Clause, and violates the principle of separation of powers.  The first two allegations are based on TracFone's assertion that it did not get adequate notice and opportunity to comment on the proposed exemption.  The separation of powers argument essentially argues that permitting the Copyright Office to provide these exemptions is an unconstitutional delegation of legislative authority by Congress.

The third assertion is the most interesting, as if TracFone is successful in its separation of powers argument, then all DMCA exemptions granted by the Copyright Office would likely be nullified on the same grounds.

US Copyright office issues new exemptions from DMCA

Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA").  The DMCA was enacted in 1998.  As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works.  For example, it is a violation of the DMCA to use a program to "break" the content scramble system ("CSS") encryption used for standard DVDs in order to make a copy of the DVD, even if making such a copy would otherwise be considered fair use under copyright law.

On October 3, 2005, the Copyright Office issued is request for comments for new exemptions from the anticircumvention rules.  Over the course of the past 13 months, the Office reviewed many comments, reply comments, held hearings, and gathered more information after the hearings. 

The net results of these administrative proceedings is that there have been six new exemptions from the DMCA approved by the Copyright Office for this three-year period, the most exemptions ever granted by the Office.  The high number of exemptions is likely because for the first time, the Copyright Office granted exemptions specific to certain classes of individuals.  The new exemptions permit, among other things, universities to make copies of audiovisual works in order to make compilations for educational use, visually impaired individuals to circumvention the protection on e-books in order to use the "read-aloud" function of their e-book reader, and, potentially most interestingly, circumvention of access controls in mobile phones in order to "unlock" the phone for use with another wireless service provider. 

The Office also granted an exemption for security researchers to test copy protection technologies for security vulnerabilities.  This exemption was likely granted, at least in part, because of the security vulnerabilities created by Sony BMG CDs using XCP copy protection, which security researchers discovered introduced a rootkit onto users' computers whether or not they agree to install any software.  The rootkit then prevented the user from seeing any file beginning with a certain prefix, including viruses, trojans, and other potentially hazardous software.  Shortly after XCP's behavior was revealed, a trojan was discovered taking advantage of its characteristics.  A class action lawsuit was eventually filed and settled, with Sony BMG agreeing to, among other things, replace any XCP CD with a CD without the XCP copy protection.

The most notable exemption that was requested and rejected by the Copyright Office was an exemption for "ripping" DVDs to view them on other devices such as video iPods.

These exemptions take effect when published in the Federal Register and will last for three years, until the next triennial rulemaking.

BlogCFC was created by Raymond Camden. This blog is running version 5.8.001.