A service of Stephen W. Workman P.C

Digital Millennium Copyright Act

Impact of the New Copyright Laws on Online Copyright Infringement
By Steve Workman, Esq.

In another last article, also found on this web site, we took a look at the principles of copyright law and traditional notions of "third-party" liability for online copyright infringement. Hopefully, you are now armed with a good understanding of how those principles might apply to your Internet activities.

Now, let's turn out attention to the Digital Millennium Copyright Act. The DMCA is not an example of legislative clarity -- it's a terribly cumbersome statute. Nevertheless, it's my purpose here to try to relate its meaning and intent. As far as web site owner/operators and service providers are concerned, the main import of the DMCA is found at Title II: the "Online Copyright Infringement Liability Limitation." Title II adds a new section to the Copyright Act, Section 512, which limits liability for online service providers for acts of copyright infringement committed by their clients.

The liability limitations in Section 512 relate to four, distinct categories of conduct by a service provider: (1) transitory communications; (2) system caching; (3) storage of information on systems or networks at the direction of clients; and (4) information location tools. Each limitation affords a total bar on monetary damages against the service provider, and restricts the availability of injunctive relief. Moreover, a finding that a service provider qualifies for one of the limitations has no relevance to a determination of whether the provider qualifies for any of the other three -- they are distinct and separate inquiries.

The fundamental question in this entire new regime is, of course, who is eligible as a "service provider"? For purposes of the first limitation concerning transitory communications, a "service provider" is defined as "an entity offering the transmission, routing, or providing connections for digital online communications, between and among points specified by a user, of material of the user's choosing, without modification to the content of the material as sent or received." For purposes of the other three limitations, "service provider" is more broadly defined as "a provider of online services or network access, or the operator of facilities therefor."

Now this is important, so take note of this next condition: Section 512 also requires that, in order for a service provider to be eligible for liability limitations, it must do two things: first, it must adopt and reasonably implement a policy of terminating in appropriate circumstances the accounts of clients who are repeat infringers and, second, it must accommodate and not interfere with "standard technical measures" regarding copyright identification and protection.

Limitations for Transitory Communications

Section 512(a) protects providers when they serve merely as a pipeline for data, transmitting digital information from one point on a network to another at someone else's request (initiation). The liability limitation here includes acts of transmission, routing or providing connections for the information, as well as intermediate and transient copies of the information that are made automatically in the operation of the network. To be eligible for this limitation, the service provider must meet the following conditions:

  • the transmission must be initiated by a person other than the provider;
  • the transmission, routing, provisions of connections, or copying must be carried out by an automatic technical process without selection of material;
  • the provider must not determine who receives the material;
  • any intermediate copies must not ordinarily be accessible to anyone other than anticipated recipients and not retained for longer than reasonably necessary; and
  • the material must be transmitted without modification to its content.

Limitation for System Caching

Section 512(b) of the new law limits the liability of service providers for retaining copies of material that has been made available online by someone other than the provider, and then transmitted to a subscriber at his request. The provider retains the material so that later requests for the same material can be fulfilled by transmitting the retained copy, rather than retrieving the material from the original source. This practice reducers the service provider's bandwidth requirements and reduces waiting time on subsequent requests for that material. A drawback of this "caching" practice is that it can result in outdated material being provided to a subscriber and can deprive webmasters of accurate "hit" information.

The liability limitation of Section 512(b) applies to intermediate and temporary storage carried out through an automatic process for the purpose of making the material available to subscribers who subsequently request it. The following conditions apply:

  • the content of the retained material cannot be modified;
  • the provider must comply with rules about "refreshing" material when specified in accordance with generally accepted industry protocol;
  • the provider cannot interfere with "hit" information technology;
  • the provider must limit access to the material in accordance with the terms imposed for access by the person who posted the information (e.g., the webmaster); and
  • any material posted in violation of copyright, and which has been removed or blocked on the originating site, must be removed or blocked by the provider.

Limitation for Information Residing on Systems at the Direction of Users.

The next limitation is set forth at Section 512(c), and concerns liability of service providers for infringing material appearing on web sites hosted by their systems. In order to be eligible for this limitation on liability, the provider must meet the following conditions:

  • the provider must not have the requisite level of knowledge of the infringing activity;
  • if the provider has the right and ability to control the infringing activity, it must not receive a financial benefit directly attributable to the infringing activity;
  • if the provider receives a notice in proper form concerning alleged copyright infringement relating to material appearing in a client web site, the provider must expeditiously remove or block the material, unless a proper counter-notice is received by the provider.
  • the provider must have filed with the U.S. Copyright Office a designated agent for receipt of notices of claimed infringement.

Of course, the knowledge standard is of critical importance here. A service provider will only be eligible for this limitation on liability if (i) it does not have actual knowledge of the infringing activity; (ii) it is not aware of facts from which infringing activity by the web site is apparent; or (iii) upon learning such facts, it responds expeditiously to remove or block access to the infringing activity.

The notice provision is also important because the copyright owner, or other person claiming rights under copyright, must comply with the notice specifications set forth in the statute. A simple letter which demands the allegedly infringing material be removed is not enough. The notice must contain the following: (i) a signature or equivalent of the copyright claimant or authorized representative; (ii) a complete or representative list identifying the copyrighted works allegedly infringed by the user; (iii) information about the location of the allegedly infringing material such that the provider can locate and remove or block the material; (iv) adequate contact information to enable the provider to contact the complaining party; (v) a statement from the copyright claimant or his representative stating in good faith that the complained of material is infringing copyright; and (vi) a statement signed under penalty of perjury by the complaining party that he is authorized to be asserting the complaint.

Once such a notice has been received by the service provider's designated agent (whose identity and address must be listed on the provider's web site), the provider must take reasonable steps to forward the notice to the alleged infringing user, e.g., the webmaster. This is because the statute wants to afford users an adequate time to respond, in order to prevent removal of material based on inaccurate or fraudulent notices. After receiving the notice, the user may submit a counter-notice, in essentially the same form as the notice, to the provider's agent, then the provider must pass the counter-notice on to the complaining party. If this occurs, the provider must restore access to the material removed or blocked as a result of the original notice within 10-14 business days after receipt of the counter-notice.

Limitation for Information Location Tools

The fourth category of activity covered by Section 512 concerns online directories, search engines and hyperlinks. Section 512(d) limits liability for the acts of referring or linking users to a site that contains infringing material, if the following conditions are met:

  • the provider must not have the requisite level of knowledge that the material is infringing (same "scienter" standard as used in Section 512(c));
  • if the provider has the right and ability to control the infringing activity, the provider must not receive a financial benefit directly attributable to the infringing activity; and
  • upon receiving notification of claimed infringement, in the form of a proper notice, the provider must expeditiously take down or block access to the allegedly infringing material.

The conditions described above are essentially the same as those for Section 512(c), but with some differences to the notification requirements. There are also safeguards here against erroneous or fraudulent notifications. As with section c, this section also includes protections for the provider against claims which may be asserted as a result of the material having been removed or blocked.

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The DMCA could be interpreted to concede that a service provider has the requisite level of participation for potential liability under a contribution theory. But the second prong of the equation, i.e., knowledge, must also be present to support a finding of contributory infringement. If a service provider is reasonably unaware of copyright infringement occurring on a client site, liability cannot properly follow. Of course, a party complaining of copyright infringement on a client sites could attempt to impose knowledge a provider by making a phone call, or sending a brief, cryptic e-mail, informing it of the alleged infringement. This is where the "safe harbor" provisions of Section 512 become so helpful. Unless such notice conforms to the requirements set forth in that statute, a service provider cannot be deemed to have "knowledge" of the infringement!

On the other hand, when might a service provider be held vicariously liable for copyright infringements occurring on a client site? The answer to this question, obviously, depends on the extent of control exercised over client sites, together with the basis of the financial participation in the client sites' revenues. In my opinion, vicarious liability cannot follow from the mere fact that a host reserves the right to terminate or refuse service if it determines that client site content may be unlawful or otherwise objectionable. I believe such a contractual provision does not rise to the level of "control" or "supervision" necessary to create a situation analogous to "respondeat superior." Even if it did, vicarious liability still requires the additional finding of "financial benefit" from the infringing activities. This test could be met, in theory, in circumstances where a provider receives a percentage of revenues generated by the client site. However, a mere flat rate, or fee based on bandwidth is not, in my opinion, enough to establish the requisite "financial benefit" to impose liability. This conclusion is supported by the safe harbor rules of new Section 512. If fees charged by service providers constituted "financial benefit," then no provider could ever obtain the benefits of this statute. (Extending this logic, neither should a transaction processing fee charged by a credit card processor give rise to vicarious liability; card processors have been dragged into court on this theory, but I am unaware of one ever having been found liable).

In short, new Section 512 serves to insulate service providers from the risk of being hauled into court, and thereafter being held liable, under the theories of vicarious liability and contributory infringement, so long as the provider complies with its obligations under the statute. If a service provider does not conform to the conditions set forth in the statute, whether it be sections (a), (b) (c) or (d), traditional principles of third-party liability for copyright infringement, discussed at the outset of this article, would then apply.

Does DMCA affect the liability of webmasters and web site owners for copyright infringement? The answer depends on the nature of the site. Remember, the limitations of liability contained in Section 512 are directed to "service providers." However, certain passive web site operations, such as a site which serves merely as a passive conduit for the posting of material, arguably could qualify as "service providers." In any case, I believe the DMCA will have the salutary effect of giving owners and operators of web sites more thorough notice of any alleged copyright violations. This is because, insofar as persons who seek to make claims of copyright infringement against a web site typically desire to retain the option of including that site's service providers in any subsequent lawsuit, claimants will have a strong motive to comply with the strict notice provisions of Section 512 to preserve that option. But it is important to remember that formal notice is not required as a prerequisite to filing suit against webmasters and site owners for copyright infringement, whether as a direct, vicarious or contributory infringer. For this reason, to the extent a webmaster receives complaints of copyright infringement, those complaints should be handled in a professional fashion and related to your legal counsel, or a designated staff person, for further investigation.

Steven Workman, is an intellectual property, entertainment law and new media attorney, secializing in e-commerce and the Internet industry. Mr. Workman is a memberof the bars of the States of California and Illinois and is a pending member of the Florida bar. Mr. Workman received his J.D. with highest honors from the University of Illinois in 1986.