Co-author Gerald M. Levine
There is a statutory remedy for removing an infringing copy from the Internet. It can be taken down. The principal legal mechanisms for protecting copyright of works copied on the Internet without permission and in violation of an author’s copyright is laid out in the Digital Millennium Copyright Act (DMCA). The major aggregators of content have developed policies and take down forms in compliance with the DMCA. If a copyright owner finds unlawful copying of her material she can request the Googles of the world to take it down. Google and the other aggregators have developed copyright-infringement notification policies for both DRM free (digital rights management) and digitally accessible works with embedded copyright protection systems. This short note only deals with DRM free materials, § 512 of the Copyright Act. Materials embedded with copyright protection systems are covered in § 1201 et seq. of the Act.
The Google notification form asks a series of questions that match the statutory list in §512 (c)(3)(A) including whether the complained about material is a copyright infringement. The series ends with this notice:
IMPORTANT: If you knowingly misrepresent that material or activity is infringing, you may be subject to liability for damages. Accordingly, if you are not sure whether material available online infringes your copyright, we suggest that you first contact a lawyer. Please also note that your message to us may be forwarded to the party who filed the original copyright complaint.
This intimidating coda is based on § 512(f) of the Copyright Act. It provides:
Any person who knowingly materially misrepresents under this section —
(1) that material or activity is infringing, or
(2) that material or activity was removed or disabled by mistake or misidentification,
shall be liable for any damages, including costs and attorneys' fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.
There is not a great deal of case-law interpreting this provision of DMCA, but federal courts that have addressed the provision have offered additional gloss on the meaning of the terms “knowing” and “material misrepresentation.” “Knowingly” has been interpreted to mean ‘that a party actually knew, 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, that it was making misrepresentations.” Online Policy Grp. v. Diebold, Inc., 337 F.Supp.2d 1195, 1204 (N.D.Cal. 2004). And “[a] material misrepresentation is one that ‘affected [the infringer or service provider’s] response to a DMCA letter’.” Capitol Records, Inc. v. MP3tunes, LLC, 611 F.Supp.2d 342, 346 (S.D.N.Y. 2009) (quoting Online Policy Grp.,337 F.Supp.2d at 1204).
Let us get our bearing. Copyright protects “original work[s] of authorship fixed in any tangible medium of expression,” regardless of whether the work has been registered. As a general rule, infringement is not actionable until the author has a certificate in hand (although this may not be true for all Circuits). That is, the author cannot commence or maintain an action in federal court until the work is registered. But the DMCA is a self-help procedure. Only if the service provider refuses to take down the infringing (or alleged infringing copy) is the author authorized to proceed further with injunctive and legal relief. There are questions that courts have not yet reached in commencing an action for infringement of unregistered material. The Copyright Office provides some information on its website.