Defending Your Copyright Could Cost You

A recent court decision may have a significant impact on photographers and other copyright owners who send DMCA (the Digital Millennium Copyright Act of 1998) takedown notices to online providers.

In a nutshell, those who fail to perform an adequate analysis, including a fair use analysis, prior to sending a takedown notice may subject themselves to claims for damages and attorney’s fees.

Going Crazy?

In early 2007, Stephanie Lenz created a 29-second video of her two young children dancing in her kitchen. A portion of Prince’s song, Let’s Go Crazy, can be heard in the background. Lenz then uploaded the video to YouTube. A few months later, Universal Music Publishing Group (UMPG), the company claiming to hold the rights to Prince’s song, sent a DMCA takedown notice to YouTube. YouTube removed the video and notified Lenz. In response, Lenz sent a counter-notification. Roughly a month later, with the help of the Electronic Frontier Foundation (EFF), Lenz sued UMPG for violating the DMCA by materially misrepresenting that her video infringed UMPG’s copyrights.

The crux of Lenz’ complaint is that UMPG didn’t perform a proper analysis before sending a DMCA takedown notice. On appeal, the U.S. Court of Appeals for the Ninth Circuit noted that “Lenz presented evidence that Universal did not form any subjective belief about the video’s fair use—one way or another—because it failed to consider fair use at all, and knew that it failed to do so.” Despite the apparent failure to perform a fair use analysis, UMPG contended that its procedures effectively considered fair use issues. Such contentions proved ineffective, prompting the Appeals Court to rule that “[b]ecause the DMCA requires consideration of fair use prior to sending a takedown notification, a jury must determine whether Universal’s actions were sufficient to form a subjective good faith belief about the video’s fair use or lack thereof.”

The DMCA and Its Framework

When originally enacted, the DMCA introduced a number of significant changes to the Copyright Act. One of the key changes intended to benefit copyright owners (including photographers) was the implementation of a framework that allows copyright owners a relatively quick and inexpensive mechanism for curtailing infringement online. This mechanism is codified in Section 512 of the U.S. Copyright Law (17 U.S.C. §512).

The DMCA framework is relatively straightforward. Copyright owners can send takedown notices to online service providers (OSPs). Upon receipt of a takedown notice, an OSP is then required to take action to remove or disable allegedly infringing content, and to notify its customer of the claim of infringement. If the customer disagrees with the claim of infringement, the customer can send the OSP a counter-notice, which the OSP is obligated to forward to the person who sent the original notice. Once a counter-notice has been sent, the copyright owner has a choice: file a court action against the infringer or let the OSP restore access to the allegedly infringing content. If no court action is filed, the OSP must restore access to the allegedly infringing material.

In order for an OSP to take advantage of the DMCA framework, it must designate and register with the Copyright Office an agent to accept notices of instances of infringement. Once the agent receives a DMCA takedown notice, the OSP is obligated to respond expeditiously to remove, or disable access to, the material claims to be infringing from the OSP’s service (the safe harbor also immunizes the OSP from claims by its customer for taking down allegedly infringing material).

“In most respects, the DMCA’s notice-and-takedown framework has been a success, creating sufficient legal certainty to support an incredible diversity of online platforms where citizens can publish and share information of all types, while also affording copyright owners a quick, extra-judicial mechanism to remove infringing material.”

The DMCA requires that takedown notices include substantially the following information: (i) the signature of the copyright owner or agent; (ii) identification of the copyrighted work claimed to have been infringed; (iii) identification of the infringing material; (iv) contact information for the complaining party; (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”; and (vi) a statement that the information is accurate and, under penalty of perjury, that the complaining party is authorized to act on behalf of the copyright owner. The notice must also be in writing and sent to the OSP’s designated agent.

Similar to the notice, the counter-notice must include a statement that the customer has a “good faith belief that the material was removed or disabled as a result of mistake or misidentification….

In a recent call for comments regarding various aspects of the DMCA, the Copyright Office noted that “copyright owners send takedown notices requesting [OSPs] to remove and disable access to hundreds of millions of instances of alleged infringement each year.” However, the Copyright Office also recognized that there have been complaints from copyright owners; at times, infringing material will reappear on the web, resulting in what has been called the “whack-a-mole” problem.

A brief recently filed by a group of prominent OSPs suggests that they share the Copyright Office’s view that the DMCA framework has proven successful. “In most respects, the DMCA’s notice-and-takedown framework has been a success, creating sufficient legal certainty to support an incredible diversity of online platforms where citizens can publish and share information of all types, while also affording copyright owners a quick, extra-judicial mechanism to remove infringing material.”

Takedown Abuses and Possible Consequences

While the DMCA framework has proven to be an effective enforcement tool for photographers who don’t wish to spend vast sums of money on lawyers, the system is also susceptible to abuse.

Addressing the problems posed by abuse of the DMCA framework in the Lenz case, a group of OSPs recently explained that “[u]nfounded and abusive takedown notices inflict real harms on [OSPs], Internet users, and copyright holders. Every time an unfounded takedown notice results in the removal of legitimate, non-infringing content posted by a user, it constitutes unjustified censorship of the user’s speech and interferes with the OSP’s business of hosting and disseminating that speech.” The screening measures required for such notices also result in harm to copyright holders whose legitimate claims of infringement are delayed in a queue behind abusive ones.

Unfortunately, there’s no shortage of examples of abuses of the DMCA takedown framework. For example, the popular service Tumblr disclosed that it received a number of abusive takedown notices, including the following examples involving photographs:

A model involved in a contract dispute with a photographer submitted a series of DMCA notices seeking removal of images of the model, despite the fact that the photographer owned the rights to the images.

A state governor submitted a DMCA notice seeking removal of photographs of the governor posted on a political parody site, and taken in public by photographers who owned the rights to the images.

The EFF publishes a “Takedown Hall of Shame” ( The site contains numerous references to abusive takedown notices, including complaints involving photographs.

In an effort to prevent abusive takedown notices, Congress included a provision to deter abuse
s: any person who “knowingly materially misrepresents…that material or activity is infringing…shall be liable for any damages, including costs and attorney’s 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….” In other words, if a copyright owner falsely accuses someone of infringing under the DMCA framework, the accused infringer will be entitled to sue the copyright owner for damages.

Stern Warning Issued and New Battle Lines Drawn

In its decision in the Lenz case, the Appeals Court issued a stern warning to copyright owners: “To be clear, if a copyright holder ignores or neglects our unequivocal holding that it must consider fair use before sending a takedown notification, it is liable for damages under [the DMCA].” While making it clear that copyright owners have to perform an analysis, the Court stopped short of requiring that copyright owners always reach the right conclusion. “If…a copyright holder forms a subjective good faith belief the allegedly infringing material does not constitute fair use, we are in no position to dispute the copyright holder’s belief even if we would have reached the opposite conclusion.”

Since the Appeals Court’s decision last September, one aspect of the decision has taken on something of a life of its own: whether simply having a “subjective good faith belief” that a use is infringing is sufficient.

As it currently exists in the Copyright Act, the fair use doctrine requires consideration of four factors that provide little meaningful guidance to the average person. The Copyright Office succinctly sums up the problem by explaining that “[t]he distinction between fair use and infringement may be unclear and not easily defined.” Combined with the changing nature of fair use (see “The Transforming Nature of Fair Use,” digitalphoto, it’s easy to see how even a well-intentioned copyright owner might reach the wrong conclusion about whether a particular use constitutes infringement or fair use. The difficulty in assessing whether fair use applies to a given situation may help explain why the Appeals Court decided that a “subjective good faith belief” is all that’s required prior to sending a takedown notice. To require more would potentially punish those who perform the required analysis, but reach the wrong result.

Lenz advocates for a higher, “objectively reasonable good faith belief” standard, citing concerns that the Court’s adoption of a “subjective” standard not only will reward ignorance of the law, it actually will encourage it. According to Lenz’s filings, “requiring reasonable legal determinations encourages those who wish to use the law as a sword to muster a basic understanding of the weapon.” Others have cautioned the Appeals Court that a subjective belief will “encourage copyright owners to remain ignorant about the limitations on their exclusive rights under the Copyright Act…because the less they know, the more leeway they would have to send takedown notices.”

It remains to be seen whether the Appeals Court is willing to change the type of belief that a copyright owner must have in order to send a takedown notice without fear of being sued for sending an abusive notice.

Impact of the Lenz Case

Although the Lenz case involved copyrights in music, the Appeals Courts’ statements regarding pre-notice obligations are equally applicable to photographers. The Court’s decision offers lessons for anyone, photographers included, who uses takedown notices as part of their copyright enforcement efforts. Photographers should heed the Court’s warning to consider fair use before making a claim of infringement in a takedown notice.

This much is clear, however: Performing an adequate fair use analysis, and making a conscientious effort to arrive at the right decision in that analysis, will help avoid arguments like the ones Lenz has now presented to the Appeals Court. 

Samuel Lewis is a Board Certified Intellectual Property law specialist and a partner at Feldman Gale, P.A., in Miami, Florida, and a professional photographer who has covered sporting events for more than 25 years. He can be reached at [email protected] or [email protected]

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