The Software IP Report

A Lesson in Compliance With DMCA Takedown Notice Requirements

By Charles Bieneman

Categories: Copyright, The Software IP Report

A defendant, seeking dismissal of the plaintiff’s complaint, was unable to rely on the safe harbor provisions of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 512(c), on the ground that the plaintiff had failed to comply with the DMCA’s notice provisions where the complaint did not make clear whether the defendant had complied with its obligations, and where the defendant had made no attempt to explain its compliance.  Scott v. WorldStarHipHop Inc., No. 10 Civ. 9538 (S.D.N.Y. May 3, 2012).

The plaintiff had sent the defendant a DMCA takedown notice concerning a video, posted on the defendant’s website, featuring the plaintiff in a classroom brawl.  The plaintiff had obtained an assignment of the copyright in the video from the person who recorded it, and on the next day registered the copyright and demanded that the defendant remove the video from its website.

The court noted that the plaintiff “plausibly alleged” a claim for copyright infringement by alleging that he owned the video and that the defendant “maintained a copy of the video on its website without his authorization after” the plaintiff became the owner of the video.  Turning to the defendant’s affirmative defenses, the court first dismissed the defendant’s affirmative defense that the assignment of the video to the plaintiff was subject to a nonexclusive license from the prior owner because the defendant was unable to support the defense with a written license, which would have been necessary to prevail over the assignment.

Next, the court turned to the defendant’s argument that the DMCA’s safe harbor provisions “foreclose[d] plaintiff’s claim,” specifically that the plaintiff’s takedown notice did not comply with the requirements of 17 U.S.C. § 512(c)(3)(A) to “state the complaining party’s good faith belief that the use of the material is not authorized, and . . . state under penalty of perjury that the information in the notification is accurate.”  The defendant reasoned that 17 U.S.C. § 512(c)(3)(B)(i) states that an accused infringer shall not be deemed to have knowledge of allegedly infringing material based on a notice that fails to “substantially comply” with requirements including the foregoing.

Unfortunately for the defendant, “the notification will be considered against the service provider if the notice complies substantially with” the DMCA’s notice requirements, “and the service provider fails to contact the complaining party or take other reasonable steps to obtain proper notification. 17 U.S.C. § 512(c)(3)(B)(ii).”  The defendant’s failure to address this provision potentially saving the plaintiff’s right of action was fatal.  The defendant’s motion to dismiss was denied.

The shame of it from the defendant’s perspective, of course, is that the DMCA takedown provisions are not that difficult to comply with, and could have saved a lawsuit.