Sailing the Internet and Finding a DMCA ‘Safe Harbor’ (Part 1 of 3)

Previously I overviewed the DMCA, and applied a limited discussion to its ramifications and impact on various stakeholders, namely the internet at large, copyright owners, and artists.  As generalized in the overview, the main purpose of Section 512 of the DMCA was the provision of a legal mechanism for service providers (e.g., SP’s, ISP’s, OSP’s, etc.) to rely on in exchange for developing the internet, with the greatest benefit being “monetary relief” stemming from various acts of copyright infringement.  However, this benefit is only garnered by qualified SP’s, and there are a number of ways a provider may fail to receive, or otherwise be deprived of, the protection of the DMCA.  In the discussion that follows, I examine how, or really when, a service provider may neglect to perform certain tasks expeditiously.

Section 512 of the DMCA, as provided by OCILLA, references the word ‘expeditiously’ an impressive eight times, including twice within 512(c)(1), shown here:

The ‘and’ in subparagraph (B) indicates there are two potential areas of 512(c)(1) where a service provider is potentially at risk for losing protection.  That is, it is required to take action expeditiously under 512(c)(1)(A)(iii) (as applicable), as well as in addition, or in the alternative, when it receives a statutorily complaint DMCA notification pursuant to 512(c)(3).  512 is a little bit murky in its wording leaving it arguable the aforementioned sections only become relevant when a compliant notification has been received by the SP.  But in any event, with particular respect to 512(c), without such notification, let alone knowledge, there is no need for the provider to act.[1]  But when there is proper notification and/or knowledge, what does it mean to take a required action ‘expeditiously’?

What does it mean?

Recently I encountered a circumstance where a national service provider failed to act within approximately 3 months after receiving infringement notification from me on behalf of a Client.  And only after I provided a follow up notification was my Client’s protected content then removed from the SP website.  Unfortunately for the service provider there were 7 registered copyrights at issue, which put my Client in a very favorable position from a legal damages standpoint.  While I received several canned responses during negotiation, the service provider was unpersuasive in all aspects of its position that it was still protected under DMCA as a qualified service provider, and ultimately yielded a favorable settlement to my Client.

In its plain meaning, expeditiously is essentially acting in a prompt and efficient manner.  But what does that mean?  There are a limited number of decisions that discuss what it means to act expeditiously under 512(c), my inference being that when the writing is on the wall as to its failure, the service provider will act expeditiously to settle leaving little opportunity for a finding on the merits.

While decisions are few, legislative history and applicable case law indicate the need for 'strict compliance' with the DMCA in order to be a qualified service provider.  With particular respect to ‘expeditiously’ of 512(c), Reports out of both the Senate and House indicated the word could not be defined with a uniform time limit because “factual circumstances and technical parameters may vary…”[2]

Thus, without the presence of complexity in regard to facts or technology, it is very plausible the meaning of expeditiously is more akin to reasonable urgent haste instead of convenient leisure.  If someone tells you to get to the hospital expeditiously, are you going to take your time or go immediately?

A situation with little complexity is, for example, where a compliant notification is sent to the designated agent of a site that includes “Please remove my Client’s image from:

                

                abcsite.com/page.html; and

                abcsite.com/images/offendingimage1.jpg”

How long does the service provider have to act expeditiously in such a situation?  An hour? A day?  A week?

Legal Precedent

It makes sense that in order to receive the magnanimous benefit of zero liability for user infringement, one should be required to pay exigent attention to notification of user infringement.  So what have the courts said?  There are a small number of cases where a court has reviewed evidence where a service provider has acted expeditiously.  There is an even smaller number of cases where a court looked at where a service provider had not expeditiously.  Of relevance is that these decisions do appear factually and/or tech contingent.

In Io Group, Inc. v. Veoh Networks, Inc., related to video and film shared over the internet, the Court believed that evidence indicating the SP acted within seven (7) days to respond to notification and/or remove content did not give rise to a genuine issue of material act that it failed “to act expeditiously ...”[3]  Here there were no factual or technological barriers in regard to handling the notification or the respective content.

In Obodai v. Demand Media, Inc. the court recognized two distinct ‘act expeditiously’ components of the DMCA with respect to copying of written material, but ultimately characterized them as one in the same.  That is, the court said,

“As previously discussed in relation to section 512(c)(1)(A)(iii)…the defendant removed the infringing posts ... For those same reasons…the defendant's conduct complied with the requirements of 17 U.S.C. § 512(c)(1)(C).”

In Obodai the plaintiff filed suit against the service provider defendant for copyright infringement, but had never provided the SP with notification. [4]  However, “shortly after” discovery of the complaint, the defendant took action to remove content and also notify the infringing end user.  Perhaps more importantly, the plaintiff did not dispute the defendant "respond[ed] expeditiously” to its notifications of infringement.

In Capitol Records, LLC v. VIMEO, LLC the court made clear that a one-day response time to a notification of infringement was indisputably expeditious.  With respect to a particular instance where a notification identified 170 videos, the court felt the three-and-a-half weeks Vimeo took to remove the content was expeditious. [5]  The court made no other comment as to why this was so, other than indicating the number of videos effected its view, thus supporting the notion that the facts-technology equation is a moving target.

In Perfect 10, Inc. v. Google, Inc., Judge Howard Matz indicated in a Civil Minutes order ruling on various motions for summary judgment that Google failed to provide sufficient evidence to support its motion with respect to a number of notifications (provided in a spreadsheet). [6]  Moreover, Judge Matz referenced evidence from the plaintiff that showed Google waited between four and seventeen months to process a number notices, as well as evidence some notices were not processed at all.  The judge further noted that, unless there was an unusually unjustifiable length of time involved, the inquiry into ‘expeditiously’ was meant to be a factual rather than legal inquiry.  This suggests that a finding at the summary judgment stage may be potentially premature, especially if there is any evidence effecting one or more elements of the facts-technology equation.

Conclusion

Whether you are a service provider or a content owner, it is important to understand a service provider may or may not be a qualified service provider in certain instances where it fails to act “expeditiously”.  This temporal requirement to act is only of relevance when the service provider is provided with or has knowledge of infringement, which may occur by its receipt of a compliant DMCA notification.  The less complexity involved in the notification with respect to the content, the less time the service provider has to act.