By: Lydia Pallas Loren*

Abstract

Copyright owners routinely obtain prompt removal of allegedly infringing materials from the Internet using takedown notices. The Copyright Act’s takedown procedures are an attractive and powerful tool to combat infringement because they do not require filing a federal copyright infringement complaint, nor do they involve any neutral assessment of the copyright owner’s infringement assertion. Because the takedown regime is embedded in safe harbor protections that immunize Online Service Providers (“OSPs”) from monetary liability for copyright infringement engaged in by Internet users, the statute creates an important incentive for Internet Service Providers (“ISPs”) to comply automatically with takedown requests sent by copyright owners. Unfortunately, this prompt method for obtaining removal of material from the Internet lends itself to abuse by copyright owners seeking to silence critics or to obtain a far broader protection for their works than copyright law actually affords.

Congress attempted to provide a shield for lawful, noninfringing activity in the takedown regime itself: the statute permits individuals to send a counter-notice that can result in the allegedly infringing material being reposted. The practices of most OSPs, however, make the counter-notice problematic and difficult to use, reducing its effectiveness as a true shield for lawful, noninfringing activity. Congress also created a mechanism to deter abuse of the takedown regime: a federal cause of action for misrepresenting that posted material is infringing. If taken seriously, the misrepresentation claim has the potential to shape the behavior of copyright owners who wield the powerful sword of the takedown notice. To date, however, few misrepresentation claims have been brought, and the early interpretations of the provisions have limited their effectiveness in curbing abuse.

Because a complete understanding of the role of the misrepresentation claim within the statutory scheme should inform any judicial interpretation of its requirements, this Article first places the misrepresentation claim in the context of the takedown regime. It then examines litigation dynamics as well as the statutory elements of a misrepresentation claim, offering suggestions on how these elements should be interpreted in light of the purpose and context of the statute. If appropriately interpreted, the misrepresentation claim holds great promise for protecting both copyright owners and lawful users of copyrighted works.

Introduction

Cheap digital computing exploded copyright’s industrial distribution model, sharply democratizing publication and dissemination. At the urging of industrial copyright producers and distributors, Congress sought to bring some order to the digital copyright chaos of the Internet by creating a “takedown notice” regime as part of the 1998 Digital Millennium Copyright Act. Merely by sending a proper takedown notice, a copyright owner can prompt an Internet Service Provider (“ISP”) to swiftly remove an allegedly infringing item from its servers; ISPs earn immunity from infringement liability if they provide that swift removal and thus are only too happy to comply. At the same time, to avoid creating a runaway copyright enforcement engine that is all gas and no brakes, Congress tempered the takedown notice by conferring a misrepresentation claim on those whose Internet expression has been silenced by extravagant copyright infringement claims in groundless takedown notices. But early testing of the misrepresentation claim brakes has shown some serious slippage.

Stories abound of individuals, companies, political campaigns, and even religious organizations using the considerable tools of the Copyright Act to seek removal of material on the Internet they find objectionable. Diebold, Inc. sought to silence critics of its electronic voting machines prior to a major election.[1] CBS News, Fox News, the Christian Broadcasting Network, and NBC News obtained removal of McCain-Palin campaign videos just weeks before the 2008 presidential election.[2] The Church of Scientology attempted to silence its critics by sending out countless takedown notices.[3] And Universal Music Group sought to have a mother’s thirty-second home video of toddlers running around the family kitchen removed from YouTube because of the copyrighted music playing in the background.[4]

In addition to the takedown notices that appear designed to censor particular speech that copyright owners find objectionable, takedown notices are also sent automatically and without verification that the entity being sent the notice in fact has engaged in any kind of activity that could remotely be considered infringement.[5] In 2009, Joe Waz, Vice President for External Affairs and Public Policy Counsel at Comcast, acknowledged the existence of “an automated system that currently forwards between 1 to 2 million notices each year.”[6] The use of automated detection software has resulted in takedown notices sent to individuals not engaged in any infringing activity,[7] including even notices sent to networked printers.[8] Each year Google, which owns the video sharing service YouTube, processes three million takedown requests.[9]

Providing a means of effective enforcement of copyright owners’ rights in the digital environment, while at the same time ensuring protection for lawful Internet activity, is an undeniably difficult undertaking. The significant magnitude of activity that constitutes prima facie infringement has led to a variety of efforts to facilitate enforcement of copyright owners’ rights. Congress has increased the activity subject to criminal sanctions,[10] has increased the monetary penalties in civil enforcement proceedings, and has even provided legal protection for technology that copyright owners employ to protect their works.[11] At the same time, balancing effective protection with permitting, and not discouraging, lawful activity has proved to be a daunting challenge.[12]

Takedown notices have proved to be an attractive mechanism for copyright owners to obtain the prompt removal of allegedly infringing materials from websites. The takedown procedures are a powerful tool to combat infringement because they do not require the filing of a federal copyright infringement complaint, nor do they involve any court assessment of the copyright owner’s infringement assertion. Because the takedown provisions are embedded in the safe harbor protections that immunize Online Service Providers (“OSPs”) from liability for copyright infringement engaged in by Internet users, the statute sets up an important incentive for ISPs to automatically comply with takedown requests sent by copyright owners. Unfortunately, this prompt method for obtaining removal of material from the Internet lends itself to abuse by copyright owners seeking to silence critics or to obtain far broader protection for their works than copyright law actually affords them.

The Copyright Act defines many circumstances in which copyrighted material can be reproduced or used by another person without the authorization of the copyright owner. The Act specifies that such uses shall not constitute infringement of the copyright.[13] The Copyright Act grants a copyright owner only a set of limited rights, all of which are constrained by many different sections of the Act.[14] For example, a fundamental constraint on the rights of a copyright owner is the fair use doctrine, codified in section 107 of the Act.[15] This provision permits reproduction of copyrighted expression but depends on a weighing of four different factors to determine if the use is infringement or if it is “fair use.”[16] One of the types of uses favored by the fair use doctrine is criticism.[17] Yet it is in this context that a copyright owner might be most tempted to seek out ways to silence critics, using the Copyright Act’s powerful takedown mechanism as a tool to accomplish that censoring.

This powerful sword given to copyright owners was added to the Copyright Act by the Digital Millennium Copyright Act as part of a compromise worked out between ISPs and copyright owners.[18] The abuse that this extrajudicial remedy can lead to has been cataloged in other articles,[19] and many have suggested reforms to the takedown procedures that would dull the edge of the sword.[20] However, given the rampant infringement that exists on the Internet, rather than dulling the power of that sword, this Article proposes a means for providing a more effective shield for lawful activity and discouraging abuse of the takedown sword.

Congress tried to provide a shield for lawful activity in the takedown regime itself. The statute permits individuals who believe their material has been wrongfully taken down pursuant to a copyright owner’s takedown notice to send a counter-notice. That counter-notice may result in the allegedly infringing material being reposted.[21] As detailed below, the practices of most OSPs make the counter-notice problematic and difficult to use, reducing its effectiveness as a true shield for lawful activity.[22]

Congress also created a mechanism to deter abuse of the takedown regime—namely, a new federal cause of action against one who misrepresents that material is infringing.[23] This misrepresentation claim, if construed by the courts to achieve its central deterrent purpose, has the potential to shape the behavior of copyright owners as they decide whether to wield the powerful takedown sword. To date, however, few have brought misrepresentation claims. Worse, some courts’ initial interpretations of the misrepresentation claim provisions threaten to limit its deterrent power to curb abuse. Because an understanding of the role of the misrepresentation claim within the statutory scheme should inform any judicial interpretation of its requirements, this Article first places the misrepresentation claim in the context of the takedown regime. It then examines litigation dynamics as well as the statutory elements of a misrepresentation claim, offering suggestions on how these elements should be interpreted in light of the purpose and context of the statute. If appropriately interpreted, the misrepresentation claim holds great promise for protecting both copyright owners and lawful uses of copyrighted works.

I. Takedown Mechanics

A. The “Safe Harbor” Provisions

The takedown provisions of the Copyright Act are codified as part of the “safe harbor” provisions of the Digital Millennium Copyright Act, passed in 1998.[24] Congress created four separate safe harbor provisions to clarify the liability that OSPs[25] faced in the early years of widespread Internet usage and explosive growth of the World Wide Web. Codified in section 512 of the Copyright Act, each of the safe harbors contains specific requirements that service providers must meet in order to gain and maintain the safe harbors’ protections from copyright infringement liability.[26]

The powerful takedown provisions are part of two of the four different safe harbors Congress created.[27] If a service provider complies with the statutory requirements, the provider is protected from liability for monetary relief and, to a large extent, from equitable relief, as well.[28] Any entity that operates an online service can avail itself of the immunities offered by section 512. From services like Dropbox, that permit users to store personal files remotely, to blogging sites, the social network giant Facebook, and indexing sites like Google, a service provider that permits users to load content onto its equipment or provides indexes and links to other sites is eligible to obtain immunity if it complies with the requirements of the statute. The safe harbors that do not involve takedown notices are applicable to providers of Internet connectivity, entities that are often referred to as ISPs.[29] For clarity’s sake, the service providers that may gain safe harbor immunities involving takedown notices are often referred to as OSPs, i.e., Online Service Providers.[30]

The takedown regime employed by the safe harbor for “[i]nformation residing on systems or networks at direction of users”[31] and for “[i]nformation location tools”[32] is fundamentally designed to keep OSPs out of the middle of lawsuits between the copyright owner and the user who has posted the allegedly infringing material, i.e., the direct infringer. To do this, the safe harbor provisions designate a specific course of conduct for the OSPs to follow.[33] Initial qualifications for safe harbor protections require service providers to “adopt[] and reasonably implement[]” a policy that provides for the termination of the accounts of subscribers who are repeat infringers.[34] An OSP interested in the protections afforded by the provisions that involve takedown notices must also designate an agent for receipt of such notices.[35] This designation must be made by filing a form with the Copyright Office[36] and by making the contact information available on the provider’s website.[37]

The real meat of the safe harbor protections that involve the takedown provisions requires that the service provider not have actual or constructive knowledge[38] that material on the system uploaded by a subscriber[39] is infringing, and, “upon obtaining such knowledge or awareness,” the service provider must act “expeditiously to remove, or disable access to, the material.”[40] When a copyright owner sends a notice of claimed infringement that meets the requirements of the statute,[41] in order to maintain the protection of the safe harbor, the service provider must “respond[] expeditiously to remove, or disable access to, the material that is claimed to be infringing.”[42] Failing to respond expeditiously to an effective notice from a copyright owner eliminates the protection from liability that the safe harbor provisions offer.[43] Thus, the takedown regime provides a powerful incentive for indiscriminate removal of material alleged by a copyright owner to be infringing.[44] Courts have noted that ISP’s remove material “as a matter of course” in response to takedown notices.[45]

Congress sought to create “strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the digital networked environment.”[46] Congress also believed it was important to provide OSPs with certainty concerning their potential liability.[47] The compromise between the content industry and the OSPs not only gave copyright owners a powerful tool by which to obtain prompt removal of infringing content, it also provided a clear mechanism for OSPs to stay out of the middle of an infringement lawsuit.

In addition to the removal of the material that the copyright owner asserts is infringing, a user may face additional consequences. For example, a user’s account with that OSP may be suspended, which can result in all of that user’s content no longer being available online.[48] The suspension of a user’s account can also be traced to the safe harbor’s requirement that an ISP implement a policy to terminate the accounts of repeat infringers.[49] If an OSP does not have such a policy or does not “reasonably implement” such a policy, it loses the protection of the safe harbor.[50]

Whether multiple assertions of infringement by copyright owners—without court adjudication of infringement—can brand someone a “repeat infringer” is not clear.[51] The trend toward using multiple assertions by copyright owners of infringement as means to trigger increased sanctions is known as graduated response.[52] International intellectual property groups have been aggressively pursuing graduated response both through treaties and in privately negotiated arrangements with ISPs and OSPs.[53] Other countries that employ a graduated response regime which results in a loss of Internet access for a “repeat infringer” have built in due process protections for individuals before termination of an individual’s Internet access.[54]

The possibility of losing access to one’s account based on mere notices of copyright infringement sent by copyright owners increases the importance of minimizing abuse of such notices. Taking the claim of misrepresentation seriously and applying it to notices of infringement meant to trigger these graduated response systems, whether or not strictly within the takedown regime, would provide a strong incentive for copyright owners not to abuse the privilege of this extrajudicial enforcement of rights.

B. The Takedown Notice

The statute establishes the requirements for an effective notification from a copyright owner. The notice must be “a written communication provided to the designated agent of a service provider” and it must include “substantially”[55] the following:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.[56]

These requirements for a takedown notice apply to both of the safe harbors—the safe harbor for “[i]nformation residing on systems or networks at direction of users”[57] and the safe harbor for “[i]nformation location tools,”[58] with one exception. If the notice is aimed at material that refers or links to an online location containing infringing material, instead of a notice concerning the infringement material itself, the takedown notice must identify “the reference or link . . . that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate that reference or link” in place of the material to be identified in paragraph (iii).[59] A compliant notice[60] triggers the obligation for the OSP to act “expeditiously to remove, or disable access to” the identified material or link.[61]

C. The Counter-Notice

The safe harbor provisions create “strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the digital networked environment.”[62] At the same time, Congress sought to “balance the need for rapid response to potential infringement with the end-users[’] legitimate interests in not having material removed without recourse.”[63] An important protection for users’ rights provided for in the statute is an ability for the user to request that the material be reposted through a “counter-notice.”[64]

Upon receipt of a takedown notice, in addition to expeditiously removing the material, the service provider is encouraged to notify the user that his or her material has been removed in response to a takedown notice from a copyright owner.[65] The statute provides a counter-notice process by which alleged infringers can notify the service providers that they have a good faith belief that the material is not infringing.[66]

The counter-notice “must be a written communication”[67] that includes substantially the following:

(A) A physical or electronic signature of the subscriber.

(B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.

(C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.

(D) The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.[68]

Upon receipt of a counter-notice, the service provider is required to promptly provide the copyright owner with a copy of the counter- notice.[69] If the copyright owner does not file a lawsuit against the subscriber seeking to restrain the subscriber from engaging in infringing activity and provide the service provider with notice of that pending action, then the service provider is encouraged to replace the material.[70] Under these circumstances, the service provider is to put the material back on the Internet no more than fourteen business days following receipt of the counter-notice.[71]

D. Takedown Notice Abuse and the Porous Counter-Notice Shield

While the counter-notice is, in theory, an important mechanism to shield lawful activity from abusive or overreaching notices, or even just as a mechanism to require court involvement in close cases, the statutory implementation of the counter-notice makes it an extremely porous shield. Just as OSPs are not required to comply with a takedown notice, they are not required to comply with a counter-notice. The statutory incentive to comply with the former, however, is significantly more valuable than the incentive to comply with the latter.

The incentive for service providers to notify the user that his or her material has been removed and to comply with the counter-notice request to put material back up comes in the form of a safe harbor from claims that the user might assert against the service provider.[72] If the service provider promptly notifies subscribers when taking material down and complies with counter-notice requests to put the material back up, the service provider maintains immunity from such user-initiated suits. However, the true risk of such a suit is often minimal due to limitations on liability that most service providers insist upon in their contracts with users.[73] Thus, while the incentive to comply with a copyright owner’s takedown notice is high, because doing so provides immunity from copyright infringement liability which can be significant,[74] the incentive for reposting material when requested by a subscriber is significantly lower.[75]

One consequence of the largely insignificant incentive for OSPs to follow through with the counter-notice aspect of the takedown regime is that users often are unaware of the ability to send a counter-notice and may even be unaware that material they posted has been removed. Alerting the user that material has been removed is only required if the OSP desires to maintain immunity from user-initiated suits.[76] Additionally, the safe harbor permitting takedown notices for links in an index or search database does not contain any counter-notice provisions.[77] However, in the current digital environment, not being listed in the major search engine, Google, has a significant effect on the visibility of content. Fortunately, courts have held that the counter-notice and replacement procedures apply to a takedown pursuant to the safe harbor concerning information location tools.[78] Even if an OSP sends a notice concerning removed material or removed links, the statute does not require the OSP to inform the user of the counter-notice possibility.[79]

Congress established the takedown regime as a way to give copyright owners what they wanted—quick removal from the Internet of infringing material and links to infringing material—and at the same time to give ISPs what they wanted: protection from copyright infringement liability and from involvement in infringement lawsuits.[80] The counter-notice was another manifestation of the ISPs’ desire to stay out of the middle of lawsuits. The counter-notice facilitates this in two ways. First, sending the counter-notice requires the user to identify himself or herself,[81] if, for example, the user was previously anonymous or using a pseudonym in his or her posting. Second, the user must identify a jurisdiction in which he or she consents to be sued for copyright infringement.[82]

These required contents for the counter-notice will cause many individuals to pause before sending one. Even if the material is clearly not infringing, many individual users would rather forego having their material reposted than face a lawsuit. Of course, sending the counter-notice does not trigger a lawsuit. In fact, a copyright owner who is attempting to use the takedown notice as a way to obtain removal of material that is clearly noninfringing will likely not file suit.[83] That likelihood, however, may be lost on an individual who faces having to reveal his or her identity and sign a document consenting to jurisdiction in order to seek reposting.

At least one court has pointed to the counter-notice as the principal means of balance in the takedown regime.[84] In the end, the counter-notice mechanism provides a weak shield for protecting lawful activity from abusive takedown notices. Thus, it is important for courts to fully embrace the misrepresentation claim that Congress provided to deter abuse of the powerful takedown tool.

II. Misrepresentation Claims

Currently, the risks for abusing the takedown procedure are not that great. Bad press can follow an overzealous takedown request,[85] but it does not create the same kind of incentive to curb abuse that would be created by clear legal liability for inappropriate takedown notices.[86] Congress recognized the risk that copyright owners would use this extrajudicial tool in a way that might run counter to the constitutionally mandated goal of the Copyright Act to promote knowledge and learning.[87] Providing a counterbalance against the potential for abuse, Congress created a cause of action against misuse of the takedown procedures. This cause of action was meant to “deter knowingly false allegations to service providers in recognition that such misrepresentations are detrimental to rights holders, service providers, and Internet users.”[88]

A. Elements of the Claim

Section 512(f) provides a critical safeguard against false accusations of online infringement[89] by creating a federal cause of action for misrepresentation. In its entirety, that section provides:

(f) Misrepresentations.—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.[90]

As the text of section 512(f) makes clear, either a copyright owner or a subscriber may bring a claim for misrepresentation. Thus, the standards established for prevailing on a claim of misrepresentation should apply against either a copyright owner who engages in a misrepresentation in a takedown notice or a user who engages in a misrepresentation in a counter-notice.

If section 512(f) is to fulfill its critically important role in preventing the abuse of the takedown regime, courts must interpret these requirements with an eye toward stemming abuse. To date, the courts’ interpretations of these requirements have provided some helpful guidance, but in these decisions there are also the seeds of misunderstanding, as well as the potential to make misrepresentation claims so difficult to prove that this cause of action will fail to achieve what Congress intended.

B. Case Law Interpreting Section 512(f)

To date there have been only three reported decisions addressing a claim of takedown misrepresentation in any depth.[91] These reported decisions highlight the importance of the section 512(f) safeguard and further illuminate the ways in which a copyright owner might find itself on the defending end of a lawsuit as a result of inappropriate use of a takedown notice. These decisions also help provide a context for discussing how best to interpret the required elements of a misrepresentation claim to fulfill Congress’ deterrent purpose in creating this cause of action.

1. Online Policy Group v. Diebold, Inc.[92]

Diebold, Inc. designs and manufactures electronic voting machines.[93] In the fall of 2003, two students at Swarthmore College obtained a collection of internal emails exchanged among Diebold employees and posted those emails on various websites.[94] The emails “contain[ed] evidence that some employees [had] acknowledged problems associated with the machines.”[95] Diebold sent takedown notices to Swarthmore College because it provided Internet services for its students.[96] Swarthmore College was advised that it “would be shielded from a copyright infringement suit by Diebold if they disabled access to or removed the allegedly infringing material.”[97] Swarthmore subsequently required the students to remove the emails from their websites.[98]

In addition to the emails posted by the Swarthmore students, Diebold also targeted an article published by IndyMedia, an online newspaper that was critical of Diebold’s voting machines and that contained a hyperlink to the emails posted by the two Swarthmore students.[99] Diebold sent a takedown notice to IndyMedia’s ISP, Online Policy Group (“OPG”) and Hurricane Electric, presumably because of the hyperlink to the emails, as contemplated by the safe harbors for “information location tools.”[100] OPG provided Internet connectivity to IndyMedia but had difficulty responding to the takedown notice because it was simply leasing space for IndyMedia’s webservers and permitting IndyMedia to share its Internet connection, an arrangement known as “colocation.”[101] Hurricane Electric provided OPG with that Internet connection.[102] Thus, the only way for either OPG or Hurricane Electric to comply with the safe harbor requirement to expeditiously remove or disable access to the alleged infringing material was to shut down IndyMedia’s server completely.[103] The court noted the significant free speech ramifications of Diebold’s takedown request given the technological arrangement at issue.[104]

The court concluded that Diebold had violated the Copyright Act by sending the takedown notices and was liable to the students who had posted the email exchange.[105] While the copyright in the emails written by employees within the scope of their employment may have been owned by Diebold,[106] their reproduction by critics seeking to expose the machines’ flaws was clearly a fair use of that copyrighted expression.[107] In addition to the lack of commercial value for the email archive to Diebold, the court noted that it was “hard to imagine a subject the discussion of which could be more in the public interest.”[108] “If Diebold’s machines in fact do tabulate voters’ preferences incorrectly, the very legitimacy of elections would be suspect.”[109]

In determining whether Diebold was liable under section 512(f), the court focused on that section’s requirement that the copyright owner “knowingly materially misrepresented” that the material constituted infringement.[110] The court concluded that “‘[k]nowingly’ means 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.”[111] The court’s use of “good faith” as a component of what it means to “knowingly” misrepresent material to be infringing pulls in the requirement that takedown notices must contain statements made in good faith.[112] Turning to the second word, the court determined that “‘[m]aterial’ means that the misrepresentation affected the ISP’s response to a DMCA letter.”[113]

Applying these standards to the facts of the case, the court found:

No reasonable copyright holder could have believed that the portions of the email archive discussing possible technical problems with Diebold’s voting machines were protected by copyright, and there is no genuine issue of fact that Diebold knew—and indeed that it specifically intended—that its [takedown notices] would result in prevention of publication of that content. The representations were material in that they resulted in removal of the content from websites and the initiation of the present lawsuit. The fact that Diebold never actually brought suit against any alleged infringer suggests strongly that Diebold sought to use the DMCA’s safe harbor provisions—which were designed to protect ISPs, not copyright holders—as a sword to suppress publication of embarrassing content rather than as a shield to protect its intellectual property.[114]

Following the court’s ruling, Diebold subsequently agreed to pay $125,000 in damages and attorney’s fees.[115]

The plaintiffs in Diebold also asserted a claim of tortious interference with contractual relations.[116] The court found that this claim was preempted by the Copyright Act.[117] The court concluded that the DMCA itself provides an express remedy for misuse of the DMCA’s takedown regime: “Congress carefully balanced the competing interests of copyright holders, ISPs, and the public, by providing immunity subject to relief for any misuse of the statute.”[118]

2. Rossi v. Motion Picture Association of America[119]

While the Diebold court refused to entertain the plaintiffs’ claim for tortious interference with contractual relations, the Ninth Circuit entangled such a tort claim with the standards for misrepresentation under section 512(f).[120] Michael Rossi operated a website promising on its home page that those who signed up for monthly membership would be able to download movies.[121] The Motion Picture Association of America (“MPAA”), after viewing these promises of access to “full-length” motion pictures that were followed by graphics for a number of MPAA members’ copyrighted motion pictures, sent several takedown notices to Mr. Rossi and his ISP.[122] When Rossi’s hosting service provider notified him that his website would be shut down, he moved his site to a new provider and filed a lawsuit against the MPAA.[123] Mr. Rossi then filed suit against the MPAA for a variety of state law claims, including tortious interference with contractual relations and intentional interference with prospective economic advantage.[124]

Notably, Mr. Rossi did not assert a claim of misrepresentation under section 512(f).[125] The Ninth Circuit, however, began its analysis of Mr. Rossi’s claim with a review of the takedown provisions of the Federal Copyright Act.[126] Mr. Rossi asserted that the MPAA did not have sufficient information to form a “good faith belief” of infringement as required by the statute because it had not attempted to download any movies from Mr. Rossi’s website.[127] The Ninth Circuit concluded that the existence of the good faith belief required by section 512(c) should be judged by a subjective standard, not by the objective standard urged by Mr. Rossi.[128]

The website contained statements that included the following:

‘Join to download full length movies online now! new movies every month’; ‘Full Length Downloadable Movies’; and ‘NOW DOWNLOADABLE.’ These representations on the website led the MPAA employee to conclude in good faith that motion pictures owned by MPAA members were available for immediate downloading from the website. The unequivocal language used by Rossi not only suggests that conclusion, but virtually compels it. . . . In fact, Rossi even admitted that his own customers often believed that actual movies were available for downloading on his website.[129]

In reaching its conclusion, the Ninth Circuit opined on the required state of mind for a misrepresentation claim under section 512(f): “A copyright owner cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake.”[130] Noting that “‘[g]ood faith’ is ‘[a] state of mind consisting [of] . . . honesty in belief or purpose,’”[131] the court concluded that a copyright owner should not be liable if an unknowing mistake is made.[132] “Rather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner.”[133]

The relevance of the court’s DMCA analysis is not revealed until many pages later in the court’s opinion: to establish a claim under state law for tortious interference with contractual relations or for intentional interference with prospective economic advantage, Mr. Rossi was required to establish the absence of justification on MPAA’s part for its actions.[134] The MPAA’s compliance with the statutory obligations for sending the takedown notice amounted to a justification. Thus, the Ninth Circuit affirmed the district court’s grant of summary judgment for the MPAA on Mr. Rossi’s tortious interference claim.[135] In the process, the Ninth Circuit provided a fair amount of unfortunate dicta concerning the requirements of a section 512(f) claim.[136]

The choice of a subjective standard for measuring good faith was unnecessary. Even applying the standard used in Diebold, the MPAA would not have knowingly misrepresented the infringing nature of the defendant’s website. A reasonable copyright owner acting with reasonable care and diligence would not have known that the defendant’s site did not contain the infringing movies it purported to contain. Importantly, the Ninth Circuit made its statement concerning use of a subjective standard in the context of discussing the good faith requirement for takedown notices, not the standard for “knowingly.”[137] At least one subsequent opinion, however, has taken the discussion of a subjective standard and applied it in the context of the misrepresentation claim.

3. Lenz v. Universal Music Corp.[138]

Stephanie Lenz’s video camera captured a scene familiar to many parents of toddlers: children engaged in exuberant energy burning by racing around the family kitchen.[139] She posted the twenty-nine second video to YouTube to share the moment with family and friends.[140] Subsequently, agents of the musical artist Prince sent a takedown notice to YouTube alleging that the video infringed the copyright in Prince’s song “Let’s Go Crazy,” which was playing in the background of the short video for twenty-one seconds. After conducting research and consulting counsel, Lenz sent YouTube a counter-notice.[141] YouTube eventually reposted the video about six weeks later.[142]

Even though the video was ultimately reposted in response to her counter-notice, Lenz filed suit against Universal, asserting claims under section 512(f), as well as claiming tortious interference with her contract with YouTube.[143] Lenz alleged that the takedown notice was issued “only to appease Prince because Prince ‘is notorious for his efforts to control all uses of his material on and off the Internet.’”[144] Focusing on the requirements for proper notice, the court determined that the question in the case was whether a copyright owner is required “to consider the fair use doctrine in formulating a good faith belief that ‘use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.’”[145]

The court held that to proceed with a takedown request in good faith, “the owner must evaluate whether the material makes fair use of the copyright.’’[146]

The purpose of Section 512(f) is to prevent the abuse of takedown notices. If copyright owners are immune from liability by virtue of ownership alone, then to a large extent Section 512(f) is superfluous. As Lenz points out, the unnecessary removal of noninfringing material causes significant injury to the public where time-sensitive or controversial subjects are involved and the counter-notification remedy does not sufficiently address these harms. A good faith consideration of whether a particular use is fair use is consistent with the purpose of the statute. Requiring owners to consider fair use will help ‘‘ensure[] that the efficiency of the Internet will continue to improve and that the variety and quality of services on the Internet will expand’’ without compromising ‘‘the movies, music, software and literary works that are the fruit of American creative genius.’’[147]

Lenz teaches that a copyright owner must consider the fair use arguments of a particular user. A full investigation to verify the accuracy of a claim of infringement is not required, but consideration of the fair use doctrine must be part of the initial review.[148] However, if a copyright owner engages in that consideration and still determines that the material is infringing, it is only a bad faith determination that will result in liability. The district court in Lenz suggests that the Diebold case is an example of a case in which a copyright owner asserted infringement when the use “unequivocally qualifies as fair use, and in addition there is evidence that the copyright owner deliberately has invoked the DMCA not to protect its copyright but to prevent such use.”[149]

In the context of discussing the required fair use consideration, the Lenz court twice referenced the “subjective” standard of Rossi. Noting Universal’s arguments concerning the fact-intensive nature of the fair use inquiry, the court opined that “there are likely to be few [cases] in which a copyright owner’s determination that a particular use is not fair use will meet the requisite standard of subjective bad faith required to prevail in an action for misrepresentation.”[150] Addressing the sufficiency of Lenz’s complaint, the court again referenced the “the subjective bad faith required by Rossi,” and suggested that following discovery, the plaintiff’s claims might be appropriate for summary judgment.[151] While it is understandable that the District Court for the Northern District of California would heed the ruling of the Ninth Circuit in Rossi, the context in which the Ninth Circuit selected the subjective standard[152] makes it distinguishable.

III. Taking Misrepresentation Claims Seriously

Taking the misrepresentation claim seriously means interpreting the statute to provide a real and robust guard against abusive uses of the takedown regime. Whether seeking to silence critics or obtain removal of other types of noninfringing material, copyright owners must understand that abusing the privilege of the extrajudicial tool of the takedown notice is not without consequences.

A. Elements of the Claim of Misrepresentation

The statute provides the following elements a plaintiff would need to demonstrate to prevail: (1) a qualifying misrepresentation; (2) the materiality of the misrepresentation; (3) the material misrepresentation was made knowingly; and (4) an injury suffered as a result of the misrepresentation.[153]

Each of these elements should be interpreted in light of the statutory context and purpose of the misrepresentation claim: discouraging abusive use of the powerful takedown tool.[154]

1. Misrepresentation

First, the statute requires that the notice contain a qualifying misrepresentation. Two different misrepresentations are actionable: a misrepresentation that the “material or activity is infringing,” and a misrepresentation “that material or activity was removed or disabled by mistake or misidentification.”[155] The fundamental misrepresentation at issue for a section 512(f) claim to prevent abuse of the takedown notice is misrepresentation that the content identified constitutes infringement.[156] The lack of infringement is what makes a copyright owner’s assertion that the activity is an infringement a misrepresentation. While this may seem like an obvious point, it is nonetheless an important element of a misrepresentation claim.

Many different provisions of the Copyright Act permit an individual to make use of copyrighted expression, either in whole or in part. From the first-sale doctrine, which permits owners of lawfully made copies to resell those copies without violating the copyright owner’s right to publicly distribute the work,[157] to the fair use doctrine[158] that permits uses of entire works and portions of works for a variety of reasons ranging from news reporting[159] to indexing,[160] to illustration of a point in a coffee table book,[161] the Copyright Act is loaded with limitations on copyright owners’ rights.[162] Mere ownership of a copyright in an original work of authorship does not entitle the copyright owner to insist that all uses of the expression be removed from the web. Thus allegation and proof of noninfringement for the material that was the target of the takedown notice is a required element to prevail on a claim of misrepresentation.

2. Materiality

Next, the statute requires allegation and proof that the misrepresentation was material.[163] In the context of a takedown notice, a misrepresentation certainly is material when it causes the ISP to respond by expeditiously removing the identified material. However, a misrepresentation can also be material even if it does not result in the ISP taking any action to remove or disable access to the alleged infringing material. For example, if the misrepresentation causes the ISP to investigate the complaint, that misrepresentation is material—it caused the intended target to undertake some action.

While it is possible that misrepresentations of other elements required in the takedown notice, such as the copyright owner’s address, phone number or email address, might rise to a level of “materiality,” they would not qualify because section 512(f) expressly requires that the misrepresentation be “that [the] material or activity is infringing.”[164] Similarly, a material misstatement could be made concerning the “good faith” nature of the copyright owner’s belief that the material is infringing, such a belief being a required statement in a takedown notice. Even if such a misstatement concerning belief was material in some abstract sense, the statute is clear in that the material misrepresentation must concern the infringing nature of the material.[165] Thus, it is difficult to conceive of a qualifying misrepresentation that content is infringing that would not meet the required element of materiality.

3. Knowingly

Interpreting the element of knowledge in the statute presents some difficulty. To ensure that the statute fulfills its role as a guard against abuse of the takedown notice regime, courts should interpret the requirement that the misrepresentation be made “knowingly” to require proof that the copyright owner (a) actually knew, (b) should have known if it acted with reasonable care or diligence, or (c) would have had no substantial doubt had it been acting in good faith, that it was making misrepresentations. This is the standard employed by the first case to address this element of a misrepresentation claim.[166] This standard expands the permissible ways to satisfy the requirement that the misrepresentation be made “knowingly,” beyond the sole means of demonstrating “knowingly” articulated by the Ninth Circuit in Rossi: evidence of actual subjective belief.[167]

Proof that the copyright owner had actual knowledge that the material was not infringing would clearly meet the statutory requirement. Evidence of such actual knowledge may come in a variety of forms, including, for example, an email from the sender of the takedown notice explaining that the problem with the material is not copyright infringement, but trademark infringement.[168] Often, however, direct evidence of a defendant’s actual knowledge may be difficult for a plaintiff to obtain given that it turns on the subjective state of mind of the copyright owner. However, a plaintiff should be able to rely on circumstantial evidence in the form of the objectively unreasonable nature of a belief that the material in question was infringing.[169] The use of such circumstantial evidence should be sufficient to withstand a defendant’s summary judgment motion, as it both provides sufficient evidence for a fact-finder to conclude the plaintiff has proven the element of knowledge in a civil suit[170] and, if the defendant testifies as to his or her subjective belief, the circumstantial evidence calls into question the credibility of such testimony.[171] Nonetheless, the problems of proof inherent in requiring a misrepresentation plaintiff to demonstrate the copyright owner’s subjective belief[172] will result in the misrepresentation claim having very little deterrent effect in curbing abuse of the takedown notice regime if that is the only means by which a plaintiff can satisfy the statutory requirement of “knowingly” making a misrepresentation. Such a requirement for proving a misrepresentation might also encourage willful blindness on the part of copyright owners concerning the nature of the content they are requesting be removed.[173]

While evidence of actual knowledge of the inaccuracy of the statement that the claimed material is infringing would certainly suffice under the statute, the statute should be interpreted more broadly. Section 512(f) does not use the phrase “actual knowledge” while other subsections of 512 do require “actual knowledge,”[174] indicating Congress’ full awareness of the difference between a standard requiring “actual knowledge” and one requiring that an action be undertaken “knowingly.”[175] Requiring that a plaintiff may only prove a misrepresentation was made “knowingly” by demonstrating the subjective belief of the copyright owner not only is inconsistent with the statutory language, but application of such a standard also would thwart the purpose of including the misrepresentation claim within the statutory scheme.

The poor fit of only using a subjective good faith belief standard is demonstrated by a situation in which an admittedly eccentric copyright owner in a comic book sends a takedown notice to an academic journal asserting that an article discussing black holes infringes his copyright in the comic book. Except for the eccentric comic book copyright owner, there is no doubt in anyone’s mind that the article does not infringe. The ISP’s incentives remain the same and, as discussed above, could lead to removal of the article.[176] If the author of the article sued the comic book copyright owner for misrepresentation and a subjective state of mind test were employed, the comic book author would be able to defeat the lawsuit through an assertion of his subjective, albeit crazy, belief that the article infringed his comic book. While the more objectively unreasonable his belief is the more his credibility will be in doubt, if he could convince the fact-finder of his entirely subjective belief there would be no remedy for the author of the article for the wrongful takedown that occurred. Congress intended to provide a tool for copyright owners to obtain quick removal of infringing material, not for removal of legitimate content from the Internet because of wild assertions of infringement. Responsible use of the powerful takedown tool is part of the regime established by Congress. Insisting upon evidence of actual knowledge through a subjective belief standard for a misrepresentation claim threatens to permit wild assertions of infringement to go unchecked and fails to provide any incentive for copyright owners to wield the powerful takedown tool responsibly.

Instead, a standard for proving misrepresentation claims that requires the copyright owner to act in good faith with reasonable care and diligence, appropriately encompasses a large portion of the potential for abuse.[177] Indiscriminate takedown notices sent without reasonable care or diligence should give rise to liability for the damages that they cause.[178] Additionally, notices that are sent when a copyright owner acting in good faith would have had no substantial doubt that she was making a misstatement should result in liability. This rule will encourage copyright owners to behave reasonably when wielding the powerful takedown tool.

4. Injury

The final element required to prevail on a misrepresentation claim is a qualifying injury. Specifically, the statute provides that a person who knowingly makes a qualifying misrepresentation “shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer . . . 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.”[179] Thus, the injury element has a causation component: the injury suffered must be caused by the removal of material triggered by a takedown notice. In addition to the causation element, the plaintiff would need to demonstrate damages that he or she incurred.

Importantly, the statute requires that for a user to prevail on a claim of misrepresentation, a takedown of material actually must have occurred.[180] Thus, when a takedown notice is sent but the notice does not result in any removal of material, a claim for misrepresentation by the user is not appropriate.[181]

Qualifying damages should include not only the financial and personal expenses associated with responding to the claim of infringement (e.g., preparing and sending a counter-notice) but also the harm to free speech rights. Qualifying damages should not, however, include attorneys’ fees for preparing and filing a misrepresentation claim.[182] The damages need not be substantial economic damages, as Congress made clear that liability is for “any damages.”[183]

B. Litigation Issues

1. Availability of Attorneys’ Fees

As noted above, the Copyright Act permits a prevailing party to recover its attorney’s fees within the discretion of the court.[184] The Supreme Court has recognized the importance of this fee-shifting provision in creating an incentive for defendants to pursue meritorious defenses against claims of infringement.[185] Similarly, in the context of a misrepresentation claim, if a plaintiff prevails, it would be appropriate for the court to permit recovery of attorney’s fees. Interpreting the statute to provide for recovery of attorney’s fees will encourage meritorious claims of misrepresentation which, in turn, will ultimately shape the behavior of copyright owners. If copyright owners understand that there is a real possibility of legal liability that involves the potential for a significant monetary award, they will be far less likely to send takedown notices targeting noninfringing material.

2. Standing and Personal Jurisdiction

A takedown notice that has resulted in material being removed from the Internet should carry standing[186] and jurisdictional consequences. An initial but significant issue concerns obtaining personal jurisdiction over a copyright owner who is abusing the takedown provisions. As detailed above, the sending of a counter-notice requires the user to consent to personal jurisdiction either in the judicial district in which his or her residence is located or in which his or her service provider is located.[187] Similarly, the copyright owner should understand that sending a takedown notice has jurisdictional consequences.

In an infringement case, the sending of a cease-and-desist letter into a forum is generally not considered sufficient to establish personal jurisdiction under the “effects test” for purposeful availment in tort cases.[188] However, as one court has noted, “it may be improper to import jurisdiction principles from one specific context—the creation and regulation of property rights—to a very different context for which those principles were not designed.”[189]

Courts should view the sending of a takedown notice as the necessary minimum contacts to justify subjecting the copyright owner to personal jurisdiction in the judicial district in which the ISP is located.[190] By sending a takedown notice, the copyright owner aims his or her conduct at the ISP, seeking to cause a particular action on the part of the ISP, i.e., removal of material from the Internet. This express aiming at the jurisdiction where the ISP is located should be sufficient to create personal jurisdiction.[191]

A more difficult question is whether the sending of the takedown notice would subject the copyright owner to personal jurisdiction in the district in which the user resides. One court has analogized a notice of claimed infringement (“NOCI”) sent to the California auction site eBay, pursuant to eBay’s “Verified Rights Owner” policy, as similar to a bank shot in basketball.[192] The NOCI caused eBay to suspend the Colorado plaintiffs’ pending auction.[193]

Thus, while . . . the NOCI formally traveled only to California, it can be fairly characterized as an intended means to the further intended end of cancelling plaintiffs’ auction in Colorado. In this way, it is something like a bank shot in basketball. A player who shoots the ball off of the backboard intends to hit the backboard, but he does so in the service of his further intention of putting the ball into the basket. Here, defendants intended to send the NOCI to eBay in California, but they did so with the ultimate purpose of cancelling plaintiffs’ auction in Colorado. Their “express aim” thus can be said to have reached into Colorado in much the same way that a basketball player’s express aim in shooting off of the backboard is not simply to hit the backboard, but to make a basket.[194]

Similarly, a takedown notice sent to an ISP is the means to further the intended end of removing a user’s material from the Internet. The harm will be suffered by the individual. In the case of a misrepresentation that the material is infringing, the copyright owner has aimed his or her conduct at the user, intending to cause that harm to the user. This provides a strong argument that personal jurisdiction is in the judicial forum in which the user resides.[195]

3. Preliminary Injunctions and Temporary Restraining Orders

Section 512(f) claims can provide an important mechanism for users to prevent overzealous copyright owners from obtaining even initial takedowns. For example, in Amaretto Ranch Breedables, LLC v. Ozimals, Inc.,[196] the court issued an order temporarily restraining the takedown of Amaretto Ranch’s virtual horses in the virtual world of Second Life despite Ozimals’ notice asserting the horses infringed on Ozimals’ copyright in virtual bunnies.[197] The court found a likelihood of success on the merits of plaintiff’s section 512(f) claim.[198]

Using a claim under section 512(f) as a basis for granting a temporary restraining order or preliminary injunction is an important procedural tool to prevent the irreparable harm that can result from repeated takedown notices. For example, eBay sellers can experience a downgrade in their reputational ratings based on repeated assertions of infringement. If the assertions of infringement are false, the targets of those assertions should have a mechanism for stopping the assertions in the first place.[199] Similarly, users can experience significant consequences if their business in a virtual world is compromised based on mere assertions of copyright infringement.[200] And, as discussed above, mere assertions of infringement can result in the termination of the accounts because the user is branded a “repeat infringer” despite a lack of any court determination concerning infringement. It is appropriate to use the misrepresentation claim as a mechanism for obtaining a court’s assistance in stopping abuse of the takedown regime.

4. Misrepresentation Claims for Infringement Notices Outside of the Section 512 Takedown Regime

The potential for abusive notices sent under the takedown regime of section 512 of the Copyright Act will be significantly reduced if courts take misrepresentation claims seriously. However, notice by copyright owners to a variety of ISPs occurs outside of the constraints of section 512. Some sites have separate programs meant to assist copyright owners in identifying alleged infringement, such as eBay’s Verified Rights Owner program.[201] Other service providers have begun cooperating with copyright owners to respond to notices of infringement outside of the formal takedown regime—for example, in peer-to-peer file sharing—that do not fall within the safe harbor for “information residing on systems or networks at direction of users.”[202] Sometimes these notices of alleged infringement are sent to ISPs employing a three-strikes or “graduated response” policy.

If a user’s rights are affected by a misrepresentation concerning the infringing nature of the user’s content in these contexts, the results can be identical to the result of a notice within the takedown regime: removal of lawful, noninfringing material. Or, the result can be even worse. For example, under a graduated response system the user may find his or her entire account suspended. Courts should recognize a claim for material misrepresentation in these contexts as well.[203]

Plaintiffs have attempted to bring other state-law based claims but have encountered problems with such claims. For example, Rossi involved an assertion of a tortious interference with contract claim that was thwarted by the justification of the copyright owner’s compliance with the requirements of section 512.[204] In Diebold the plaintiffs asserted, in addition to their federal misrepresentation claim under section 512(f), a claim for tortious interference with contractual relations.[205] The court held that the Copyright Act preempted the state law claim.[206] In the context of a takedown notice sent pursuant to section 512, the court concluded that the sole remedy was one premised on misrepresentation as provided for in that section.[207]

At a minimum, outside of the context of the formal takedown regime courts should not find that the Copyright Act preempts state law causes of action. Those state law causes of action can provide an important check on egregious assertions of expansive copyright rights that are not supported by the Federal Copyright Act. Additionally, courts should consider permitting assertions of misrepresentation claims that result in removal of lawful material in contexts outside of the formal takedown regime established in section 512.[208]

5. Role of Nonprofit Organizations and Law School Clinics

A tempting calculation for copyright owners may be to consider the financial wherewithal of individuals who have posted material the copyright owners would prefer to see removed. How likely is it that those individuals will invoke the protections of section 512(f)? In this context, one must not underestimate the willingness of nonprofit and pro bono clinics to take on cases involving overzealous use of takedown notices. The plaintiffs in both Diebold and Lenz were represented by the Electronic Frontier Foundation (“EFF”).[209] Any copyright owner contemplating using the Copyright Act’s takedown provisions under questionable circumstances would be wise to consider the significant leveling effect provided by these nonprofit organizations and pro bono clinics.

Conclusion

The takedown provisions of the Copyright Act are a powerful tool that copyright owners may use to obtain prompt removal of infringing material from the Internet without judicial assessment of the assertion of infringement. Congress provided a mechanism to deter abuse of this extrajudicial enforcement mechanism in the form of a new cause of action for material misrepresentation. Courts should interpret the requirements for prevailing on a claim of misrepresentation with an eye toward fulfilling congressional intent. This means using a standard that would hold copyright owners liable not only when they had actual knowledge that the material targeted for takedown was not infringing, but also when the copyright owner should have known if it acted with reasonable care or diligence that the material was lawful. It also means interpreting the injury requirement broadly and awarding attorney’s fees to prevailing plaintiffs. Taking the claims of misrepresentation seriously will shape the behavior of copyright owners who seek removal of material through takedown notices.