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Copyright Law Commentary
Ninth Circuit Clarifes Rule on Notice under the Safe Harbor Provision of Section 512 of the DMCA
Perfect 10, Inc. v. CCBill L.L.C.
Posted: 05/24/2007
By: Thomas F. Zuber, Esq.
Introduction
The Ninth Circuit recently clarified the requirements for notice under the safe harbor provision of section 512 of the Digital Millenium Copyright Act. Though other courts have created relatively flexible standards, the Ninth Circuit ruled that compliance with all of the section’s clauses is required. This is good news for website providers, since it keeps copyright owners from shifting to providers their burden of investigating and remedying alleged infringement.
Detailed Commentary
BACKGROUND
Notice Requirements That Must Be Satisfied in order to Lose Safe Harbor
The Digital Millenium Copyright Act ("DMCA") allows an Internet service provider a safe harbor from copyright infringement liability for infringing activities by a third party using its system where the service provider is not aware that the system is being used to infringe. That safe harbor is lost, however, where the service provider is on notice of the infringement. The DMCA lists six requirements for a notice sufficient to take the provider out of the safe harbor: (1) a signature of the person who is authorized to act on behalf of the owner of the allegedly infringed copyright; (2) identification of the copyrighted work or a representative list if there are numerous works at a single site; (3) identification of the allegedly infringing material with “reasonably sufficient” information to allow the service provider to locate the material; (4) the complaining party’s contact information; (5) a statement that the complaining party has a good faith belief that the work is infringing; and (6) a statement under penalty of perjury that the complaining party is authorized to act on behalf of the copyright owner. 17 U.S.C. § 512(c)(3). For a notice to be effective, it must comply “substantially” with those six requirements. The U.S Court of Appeals for the Ninth Circuit here held that “substantial compliance means substantial compliance with all of them.”
PERFECT 10’s DID NOT SUBSTANTIALLY COMPLY WITH EACH NOTICE REQUIREMENT
Accordingly, because Perfect 10’s notice did not meet all of those requirements, it did not comply and could not serve to remove defendants from the safe harbor.
Perfect 10’s notice consisted of three separate sets of documents, which Perfect 10 argued should be taken as a whole constitute prior notice. The first set of documents consisted of a 22,185 page bates-stamped production that included photos of Perfect 10 models who allegedly appeared on defendant-hosted websites. That production did not include the requisite “under penalty of perjury” statement. The second set of document consisted of a spreadsheet identifying by bates number the Perfect 10 models cited in the first set of documents. The spread sheet also lacked a sworn statement. The final set of documents contained interrogatory responses, which incorporated by reference the spreadsheet, which again lacked a sworn statement.
Perfect 10’s Deficiencies Were Beyond Mere Technical Errors
The court held that the deficiencies in these sets of documents constituted more than mere technical errors. The court foud the lack of sworn statements particularly troubling: “Accusations of alleged infringement have drastic consequences. A user could have content removed, or may have his access terminated entirely. If the content infringes, justice has been done. But if it does not, speech protected under the First Amendment could have been removed.” The court further held that all of the required elements of the notice must be contained in a single writing, since “[p]ermitting a copyright holder to cobble together adequate notice from separately defective notice” places an undue burden on service providers to piece together the relevant information.
This case appears to be a substantial victory for website providers in general. The court made clear its position that copyright owners, rather than the service providers, had the initial burden of identifying potentially infringing material and documenting it adequately, and that owners could not shift the cost of doing so to the providers by sending incomplete notices. Indeed, the court specifically held that service providers could ignore a notice that lacked the required penalty of perjury statements; if the complaining party is unwilling to make those statements there is no reason the service provider should start potentially invasive proceedings.
It is likely that, had this action been brought in the Fourth Circuit, the outcome would have been different. In ALS Scan, Inc. v. RemarQ Communities, Inc., 239 F.3d 619 (4th Cir. 2001), a case of first impression addressing the issue of imperfect notice, the court held that a copyright holder’s notice need “comport with the prescribed format only ‘substantially,’ rather than perfectly.” Though that case did not address the failure to include sworn statements, the court indicated its belief that the requirements were meant to be flexible and “relaxed” and that, so long as the Internet service provider could easily locate and identify the infringing material, notice was sufficient.
The author, Thomas F. Zuber, Esq., is a partner of Zuber & Taillieu LLP, specializing in transactions relating to patents, trademarks and copyrights.
Copyright Law Summary
Read the related Copyright Law summary: Perfect 10, Inc. v. CCBill LLC
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