I wanted to take a break from discussing the America Invents Act to discuss a recent copyright decision from the U.S. Court of Appeals for the Ninth Circuit (the “Ninth Circuit”) concerning “takedown notices”1 under the Digital Millennium Copyright Act (DMCA). This subject should be of interest to Industrial Heating readers because many readers have businesses with websites, may own copyrights or both.
The name of the case is Lenz v. Universal Music Corp. et al. The decision was issued on Sept. 14, 2015. The Lenz case considered the steps that a copyright holder must take before issuing a “takedown notice” under the DMCA.
A takedown notice can be used by copyright holders to convince service providers to remove content from a website that the copyright holder believes infringes its copyrights. A takedown notice can be a powerful weapon because a copyright owner does not have to get a court order before it sends the notice.
Instead, a copyright holder merely needs to send a written notice to a service provider that identifies the copyrighted material, provides the sender’s contact information and states that the copyright holder is acting in good faith. The copyright holder must also state that the information contained in the notice is accurate and sign the notice under the penalty of perjury.
A website owner that is accused of copyright infringement in a takedown notice can send a counter-notice if it believes that the sender of the takedown notice is mistaken. If that should happen, then the parties may have to file a lawsuit to resolve the matter.
The Lenz Case
The Lenz case involved a 29-second home video that was posted on YouTube that depicted two young children dancing to the Prince song “Let’s Go Crazy” by the children’s mother. The video came to the attention of Prince’s publishing administrator, who sent a takedown notice to YouTube. The mother sent a counter-notice to YouTube in an effort to resolve the matter. However, YouTube sided with Prince’s publishing administrator.
The mother filed a lawsuit in a district court (i.e., a lower court) alleging that the publishing administrator misrepresented the fact that the takedown notice was sent with good faith because the publishing administrator never considered whether the mother’s use of the song “Let’s Go Crazy” represented a fair use of the copyrighted song.
The consideration of fair use in copyright matters can be complex. The statute that defines the fair-use defense in copyright law identifies four factors that must be considered:
- The purpose of the use
- The nature of the copyrighted work
- The portion of the work that is being used
- The effect of the use on the market for the work
However, the statute does not specify how to weigh those four factors, so the issue is decided on a case-by-case basis. As a result, it is difficult to predict whether a court will find that fair use exists even for highly experienced intellectual-property attorneys. With this in mind, the publishing administrator took the position that it was not necessary to consider fair use before sending a takedown notice.
The parties filed competing summary judgment motions in the district court, which took the unusual step of asking the Ninth Circuit to decide certain legal issues before the case went to trial. The Ninth Circuit sided with the mother of the two children, which meant that the publishing administrator should have considered fair use before it sent the takedown notice.
The Implications of the Lenz Case
The Ninth Circuit is one of the 12 regional circuit courts within the U.S. federal court system that decide appeals in copyright and trademark cases. As a regional circuit, the Ninth Circuit only decides appeals for cases arising in Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon and Washington federal courts. As a result, the Lenz decision is binding only on entities that are subject to the jurisdiction of those states.
As a practical matter, however, most regional circuits are likely to find the Lenz decision to be persuasive. Consequently, most copyright owners who intend to send a takedown notice should consider whether the allegedly infringing material represents a fair use of the copyrighted material before sending a notice.2
1. The term “takedown notice” can apply to any type of legal demand letter that one party sends to an Internet service provider (Yahoo, YouTube, Google, etc.) to get the Internet service provider to remove content from a website. These takedown notices could be sent because the content on the website allegedly violates some intellectual property right, the content is defamatory or the content violates some other legal right of the party in question. This blog posting will focus on takedown notices sent pursuant to the DMCA.
2. Also, most copyright holders should consult an experienced intellectual property attorney before sending a takedown notice. The DMCA includes a provision that allows a party that has been wrongly accused of infringement in takedown notice to obtain damages in certain circumstances.