Intellectual Property and the Internet/Online Copyright Infringement Liability Limitation Act

The Online Copyright Infringement Liability Limitation Act (OCILLA), a portion of the Digital Millennium Copyright Act known as DMCA 512 or the DMCA takedown provisions, is a 1998 United States law that provided a safe harbor to online service providers (OSPs, including ISPs) that promptly take down content if someone alleges it infringes their copyrights. Most are generally supportive of the act, although some believe it has some problematic portions and is overused.

Overview

The act added section 512 to the Copyright law in Title 17 of the United States Code (Public Law No. 105-304, 112 Stat. 2860, 2877).

This provision of United States copyright law is best known for allowing copyright holders to ask that any online service provider (OSP, including ISPs) remove access to copyright infringing material if the copyrighted material is made available through the OSP. It is a powerful device for the protection of copyright on the internet for providers that are located in the United States, though many foreign providers may also respond to such requests for fear of litigation in the United States should they have any significant business interests in the U.S.

In exchange for this, the OSP gains:

new protection from liability to its own customers as a result of a decision to remove material.
clear procedures for removing and restoring material.
a safe harbor against copyright infringement claims, similar to the protection against non-intellectual property infringement liability provided by Section 230 the Communications Decency Act (CDA).

Customers gain through a reduced chance that works will be removed unnecessarily by an OSP which hasn't received an infringement complaint.

Take down and put back provisions

These are the most commonly encountered parts of the act. They provide a procedure which gives the OSP a safe harbor so long as it complies with the requirements and follows the notification and counter-notification provisions.

Takedown example

Here's an example of how the takedown procedures would work:

Alice puts a copy of Bob's song on her AOL-hosted website.
Bob, searching the Internet, finds Alice's copy.
Bob sends a letter to AOL's designated agent (registered with the Copyright Office) including:
1. contact information
2. the name of the song that was copied
3. the address of the copied song
4. a statement that he has a good faith belief that the material is not legal
5. a statement that, under penalty of perjury, Bob is authorized to act for the copyright holder
6. his signature
AOL takes the song down.
AOL tells Alice that they have taken the song down.
Alice now has the option of sending a counter-notice to AOL, if she feels the song was taken down unfairly. The notice includes
1. contact information
2. identification of the removed song
3. a statement under penalty of perjury that Alice has a good faith belief the material was mistakenly taken down
4. a statement consenting to the jurisdiction of US Federal District Court of Alice, or if she's outside the US, AOL
5. her signature
AOL then waits 10-14 business days for a lawsuit to be filed by Bob.
If Bob does not file a lawsuit, then AOL puts the material back up.

Requirements to obtain the safe harbor

To obtain the safe harbor the OSP must:

not have actual knowledge that the material or an activity using the material on the system or network is infringing (512(c)(1)(A)(1)).
not be aware of facts or circumstances from which infringing activity is apparent (512(c)(1)(A)(2)).
upon obtaining such knowledge or awareness, must act expeditiously to remove, or disable access to, the material. (512(c)(1)(A)(2) and 512(c)(1)(C))
not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity (512(c)(1)(B)).
have a Designated Agent registered with the US Copyright Office to receive notifications of claimed infringement (often called takedown notices). If the designated agent receives a notification which substantially complies with the notification requirements, the OSP now has actual knowledge and must expeditiously disable access to the work. The OSP must make available to the public through its service, including on its web site substantially this information:
- the name, address, phone number and electronic mail address of the agent.
- other contact information which the Register of Copyrights may deem appropriate.
adopt, reasonably implement, and inform subscribers and account holders of a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider's system or network who are repeat infringers (512(i)(1)(A)).
accommodate and not interfere with standard technical measures used to identify and protect copyrighted works (512(i)(1)(B)).

The Interim Designation of a Registered Agent is to be filed with the United States Copyright Office and must be accompanied by a $30 fee, payable to the Register of Copyrights [1]. If mailed, the Interim Designation should be addressed to: Copyright GC/I&R, P.O. Box 70400, Southwest Station, Washington, D.C. 20024. An OSP may also file the Interim Designation by hand, by delivering to the Public Information Office of the Copyright Office, Room LM-401, James Madison Memorial Building, Library of Congress, 101 Independence Avenue, S.E., Washington, D.C., during normal business hours, 9:00 am to 5:00 pm. Designations and amendments are posted online on the Copyright Office website.

Notification of claimed infringement

If an infringement has occurred a copyright holder may send a written notification of claimed infringement to the designated agent. This must include the following (512(c)(3)(A)(i-vi)):

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(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.

(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

See 512(a) and (h) below if the information is not stored on the system of the OSP but is instead on a system connected to the internet through it, like a home or business computer connected to the internet. Legal liability may result if access to material is disabled or identity disclosed in this case.

If a notice which substantially complies with these requirements is received the OSP must expeditiously remove or disable access to the allegedly infringing material (512(c)(1)(C)). So long as the notice substantially complies with clauses (ii), (iii), and (iv) the OSP must seek clarification of any unclear aspects (512(c)(3)(B)(ii)). It is prudent to seek clarification in all cases.

After the notice has been complied with the OSP must take reasonable steps to promptly notify the alleged infringer of the action (512(g)(2)(A)). Note that the OSP is not prohibited from doing so in advance, only required to do so afterward. If there is a counter notification from the alleged infringer, the OSP must respond appropriately to it.

If the OSP complies with this and the counter notification procedures, it is safe from legal liability to its own customer as a result of taking down the material.

Counter notification

An alleged infringer may file a counter notification to the OSP. The counter notification must include (512(g)(3)(A-D)):

(A) A physical or electronic signature of the alleged infringer.

(B) Identification of the material that has been removed or to which access has been disabled and the location before removal.

(C) A statement under penalty of perjury that the alleged infringer has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.

(D) Their name, address, and telephone number, and a statement that they consent to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber's address is outside of the United States, for any judicial district in which the service provider may be found, and that they will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.

Once a valid counter notification has been received the OSP must:

promptly provide the person who filed the original notification with a copy of the counter notification and inform them that the material will be replaced or access to it restored in 10 business days (512(g)(2)(B)).
replace the material and cease disabling access to it not less than 10 and not more than 14 business days following receipt of the counter notification. This does not apply, and the material should not be replaced, if the designated agent receives notification that legal action to seek a court order to restrain the subscriber from engaging in infringing activity to the material has been commenced (512(g)(2)(C)).

Interpretation of the law

The material in this section is not the law and not legal advice, but is provided to assist the reader in understanding the various questions that arise in relation to the procedures outlined in the law.

The law provides for “expeditious” action. The meaning of expeditious in the context of this law has not yet been determined by the courts. Black's Law Dictionary defines "expeditious" as: "rapidity in action" and "performed with, or acting with, expedition; quick; speedy." In the common law, the term "expeditious" has been interpreted according to the circumstances, allowing more time than "immediate" but not undue delay. Some suggest that the most prudent courses are to comply "immediately" or to seek immediate legal advice from qualified legal counsel. In the commercial online world, taking more than 24 hours may well be viewed as undue delay. However, when legal advice is factored into the equation it is reasonable to give counsel time to review all the facts, verify the necessary elements of the notice and conduct minimal research to ascertain the current state of the law. This may reasonably occur when the material posted appears likely to be covered by fair use, for fair use is not copyright infringement. So, in some situations it may be reasonable to determine that "expeditious" would take more than 24 hours, and if the ISP was a small not-for-profit provider, or a server run by volunteers, it may not have the resources to obtain a legal opinion with the same speed that a large multinational corporation may have resources at its disposal to comply immediately. There may not even be a person immediately available who is qualified to determine if the notice complies with the standards set forth in the act. Perhaps a reasonable court would take these factors into consideration. We will have to wait and see as the courts in the United States have yet to rule on these issues.

For a commercially run on-line provider taking action within the hour to tell a customer that a takedown notice has been received and informing them that they must immediately remove the content and confirm removal, giving them six to twelve hours to comply; and otherwise informing them that the content will be taken down or their internet connection terminated, may be considered reasonable. Some courts may find this to be too great a burden on an ISP if it receives a large number of communications at the same time or has limited resources to review § 512 notices for substantial compliance. It may also depend on how the notice is sent. If the notice is sent via regular mail or via fax, there may be a lag between the sending of the notice and its reception by those who are able to act upon it. If the notification is received by a mail delivery on a Saturday when the ISPs offices are closed and not acted upon until Monday, that may be considered reasonable.

The other issue to keep in mind is that the delay in responding may not amount to a significant amount of damages and someone who has had their material removed by the § 512 procedure late may be more than satisfied with the result; it is much less expensive than filing a copyright infringement suit in federal court that might revolve around a minor technicality of the law. Indeed one of the purposes of this section was to remove a large number of potential infringement suits from the courts when the facts revolving around infringement were basically undisputed and the damages could be minimized within a short period without the intervention of a US federal district court judge. An infringer may be more than happy to know that the material has been taken down for the minor fee of having a lawyer draft a compliant "take down" notice rather than the costs of drafting, filing, serving and prosecuting a federal copyright infringement action.

It is also useful to remember that another law, the federal Communications Decency Act (CDA) still protects the ISP from liability for content provided by third parties (see below). Even if a removal is found not to be "expeditious" within the meaning of the law and the so-called "safe harbor" under the DMCA is lost, in many cases the ISP may still be protected. Through these two laws there are ways to balance the ISP's intent to assist with the protection of third party copyright and the desire to preserve good customer relations. There is also a question of the infringement that is placed by a third party being an issue of negligence or another tort on the part of the ISP. If the ISP takes steps considered reasonable person|reasonable or is found not to have a duty of care to police potential infringers on the site then the infringement may be considered "innocent" from the point of view of the ISP and the infringer may still be held to be the liable party which posts the infringing work or works.

It is sometimes stated that the ISP needs to give the alleged infringer ten days notice before acting. This is incorrect: the ISP must act expeditiously. The ten day period refers to the counter notification procedure described below after the infringing material has been removed, offering them an opportunity to counter the allegations presented to the ISP not during the stage of the so-called "take down" procedure.

It is sometimes suggested that content must be taken down before notifying the person who provided it. That is also not required, so long as the removal is expeditious. A large connectivity provider with many internet service provider|ISP customers would not be acting reasonably by disconnecting a whole ISP if it received a takedown notice for a web site hosted by that ISP on behalf of one of its customers. The law appears to allow the necessary flexibility to deal reasonably with relaying takedown requests to handle such situations.

Please note: all the hypothetical situations in this section are speculative scenarios and are not settled law. The law will not be completely interpreted until the courts have ruled on the various issues brought up by the law. While the suggestions here may appear to be compliant, a court may hold that none of these suggestions are in compliance with the act.

Providing notice of the designated agent

There is a common practice of providing a link to legal notices at the bottom of the main web page of a site. It may be prudent, though it is not required by the provisions of section 512 of the copyright law, to include the designated agent information on the page the legal link goes to, in addition to any other places where it is available. As long as the site gives reasonable notice that there is a method of compliance, that should be sufficient. Once again the courts have not ruled on the technicalities of posting of these notices.

Actual knowledge of infringement

The law also requires "actual knowledge" of infringement before action must be taken. Actual knowledge is not an opinion about infringement i.e. "I think this is infringing" or "this is copied from another site, therefore it is infringing". Since the OSP may have some potential liability to a customer under contract law for inappropriately removing the customer's material, waiting for infringement notifications before acting would appear to be a prudent course. Then, the material can be removed, with the safe harbor protecting the OSP from liability both from the customer and the third party.

In one situation (not a legal case) an online user of a message board system objected to the posting of a series of questions relating to the Bible on one of the system's private message boards. The questions had been used by The West Wing scriptwriter Aaron Sorkin. The posting involved the fictional President of the United States embarrassing another character in a dramatic scene at a fictional White House party. The online user objecting was correct that it had been used in the TV series. However, Sorkin was not the author of the original material. He had received it in repeatedly forwarded email, modified it and used it in the show. The message contained the original version plus two added paragraphs, not the show version. The original was written by Kent Ashcraft, who had effectively released it as an open letter, a work roughly comparable to a press release that the authors expected will be freely copied for further publication. The message board post was really a very clear case of fair use, not infringement. Even if it had been from the show, the use of the piece as a joke in that context would probably have been fair use [2], [3]. The clear removal of the need to make such error-prone decisions in the very complex provisions of fair use may be one of the gains of OSPs from this law.

Other provisions

512(a) Transitory network communications

Section (a) says that service providers aren't liable just because traffic passes through their networks, so long as it is not stored on their systems and is handled automatically by their systems and they don't control or modify it. Essentially, this says that ISPs aren't responsible for what flows through their networks, even if it is infringing and they know it. There are no takedown provisions.

The key technical distinction between 512(a) and (b), (c) and (d) is the location of the material. In the cases of caches (b), web sites (c) and search engine indexes (d), the information is presumably on systems controlled by the service provider. That is not the case for the situation covered by this subsection.

See section 512(h) below for cases seeking to use 512(c) takedown and 512(h) subpoena procedures for 512(a) situations. The 20 January 2003 ruling in the Verizon case did not use the technical difference mentioned in the previous paragraph. The December 2003 Verizon appeal decision did and overturned the original decision. A further appeal is possible, so the situation remains uncertain. As of February 2004 it is reported that following the December decision, no ISP has complied with a subpoena of this sort and the RIAA has instead commenced copyright infringement actions using non-OCILLA procedures.

512(b) System caching

This says that caching conducted in standard ways and not interfering with copy protection systems is fine. If the cached material is made available to end users the system provider must follow the takedown and put back provisions. This may apply to situations like the proxy and caching servers used by many large ISPs and a very wide range of other providers.

Copyright lawyers disagree on whether or not it applies to something like the Google cache [4], with some arguing that it is not collected at the direction of an end user but by Google crawling the web itself. Google may be able to do this instead under the doctrine of fair use. In the case of online newspapers Google has chosen to produce a non-caching news portal rather than resolve the question in court.

512(c) Information Residing on Systems or Networks At Direction of Users

This applies to personal home pages, web sites, internet providers, message boards and a very wide range of other services. It is the cause of the vast majority of activities relating to this law.

This also contains the takedown procedures described earlier and referenced by other parts of the act.

The December 2003 Verizon decision stated in part that "any notice to an ISP concerning its activity as a mere conduit does not satisfy the condition of § 512(c)(3)(A)(iii) and is therefore ineffective", so these takedown notices are not valid where the content is on the computer of the end user.

512(d) Information Location Tools

This brings search engines like AltaVista into the scope of the takedown and put back system for making links.

512(e) Limitation on Liability of Nonprofit Educational Institutions

This protects nonprofit educational institutions from liability for the actions of faculty and graduate student employees relating to course materials placed online for use within courses provided in the preceding 3 years, provided the institution doesn't receive more than 2 infringement notifications about the same individual in a 3 year period. The institution must provide informational materials which accurately describe and promote compliance with US copyright laws.

512(f) Misrepresentations

This says that anyone who makes a false claim of infringement or false counter-notification is liable for the damages suffered by the other parties, including legal fees.

512(g) Replacement of Removed or Disabled Material and Limitation on Other Liability

This contains the put back provisions described earlier and referenced by other parts of the act.

512(h) Subpoena To Identify Infringer

This provides for subpoenas to identify infringers. Part (h)(2)(A) requires that the request to the court include "a copy of a notification described in subsection (c)(3)(A)" (a takedown notice, see above). Note that 512(c)(3)(A)(iii) states that the notice must identify the allegedly infringing material that is to be removed, and provide reasonably sufficient information for the service provider to locate the material residing on its system.

If the OSP is served with such a subpoena after or at the same time as a valid takedown notice, it must expeditiously provide the information required by the subpoena.

OSPs should exercise caution and ensure that they have received a valid takedown notice before disclosing the identities of their customer. It would be very prudent to seek immediate legal advice if a subpoena is received:

when a valid takedown notice hasn't been served
if the notice doesn't identify any infringing material, as required by 512(c)(3)(A)(iii)
if either the takedown notice or the subpoena is in any other way not in compliance with the requirements.
if the material is not on the systems of the OSP but on a computer using it as a connection to the internet. Section 512(a) provides protection for simple transfer of data on an ISP network and that section does not provide for takedown and put back procedures.

Complying with the subpoena would risk liability from the customer if their identity is disclosed based on the improper subpoena.

In 2003, the RIAA appeared to be seeking subpoenas and serving takedown notices which did not comply with these requirements, notably using the subpoena provisions for 512(a) situations, which don't provide for them. Anyone served with such a subpoena should seek the assistance of a lawyer.

On 20 December 2003, the DSL ISP Verizon prevailed on appeal in its case seeking to prevent the use of this section for transitory network communications, the decision reversing a court order to supply customer details. Case documents [5], [6]. A further appeal by the RIAA is possible. The appeal decision accepted the argument that the key distinction was the location of the files, with this section applying only when the material is stored on equipment controlled by the OSP.

On 6 October, 2003 Charter Communications became the first cable internet provider to challenge the RIAA use of this provision[7], when it filed for a motion to quash the subpoenas to obtain the identities of 150 of its customers.

512(i) Conditions for Eligibility

This outlines the requirement not to interfere with copy protection systems and the requirement to notify users of an account termination policy for repeat offenders.

It is possible that one of the objectives of the sending of what are claimed to be DMCA infringement notifications by some copyright holders is an intent to use the account termination policy requirement to get end users disconnected by their ISP. For that reason, it may be prudent for anyone receiving a notification for material on their own computer to tell the ISP that the notice isn't a valid DMCA infringement notice and remind the ISP that the DMCA only requires action under this clause for valid notices.

512(j) Injunctions

This gives the procedures for obtaining injunctions against OSPs to require them to leave material unavailable.

512(k,l,n)

These sections define an OSP, state that other defenses (notably the Communications Decency Act, though it isn't identified specifically) aren't limited and state that parts (1), (b), (c) and (d) apply independently.

512(m) Protection of Privacy

This says that OSPs retain the protections of parts (a) through (d) even if they don't monitor their service looking for infringing activity and that they are not required to remove or disable access to material if it would break another law.

Criticism

While there is broad general support for the law, some object to specific provisions or uses they find problematic.

A major objection is that the counter-notice procedure is too complicated or unknown to most site owners, especially when the ISP is not required to tell them of its existence. According to Chilling Effects, an archive of "cease-and-desist" notices: Google has taken hundreds of sites out of its index because of DMCA requests, but not a single person has filed a counter-notice, nor have they received a counter-notice from any other OSP.

One objection is to the imbalance in statements between the original complaint and the counter-notice. To get a site taken down, Bob need only state a good-faith belief that neither they nor the law have authorized the use, with no requirement that claim statement be under penalty of purjury. By contrast, to get a page back up, Alice must claim a good faith belief under penalty of perjury that the material was mistakenly taken down. This allows for situations where copyright holders can indiscriminately send out letters asking for sites to be taken down, while to get the sites back up, the recipients might need to spend time finding and consulting with a lawyer. Section (f) makes the sender of an invalid claim liable for the costs involved, including legal fees, but the cost to obtain that remedy may be high.

Another objection is to the 10-14 day delay before the ISP puts something back up in response to a counter-notice. For example, if a site advertised an upcoming labor protest outside BlamCo, BlamCo could send a DMCA notice to the site's ISP alleging copyright infringement of their name or logo a week before the protest. Even if the site's owners immediately filed a counter-notice, the site could not be put back up until after the protest, when it would be too late to be useful.

Additionally, some object that unlike court cases, there is no public record of takedown requests and counter-notices. This prevents the public from seeing how the process is used. (Chilling Effects has tried to make up for this shortcoming, but so far really only Google submits their takedown notices.)

Some also object to the provision's broadness. It covers things that would not traditionally be considered copyright problems, such as links by Google to infringing pages, and it has been suggested that OSPs like Google should receive a safe harbor without having to take sites out of search engines.

Proposed solutions: Require Bob state under penalty of perjury that he has personally investigated the file and found it to infringing and allow Alice to sue Bob for damages if his statement turns out to be negligently false. When AOL informs Alice that her site was taken down, require AOL to inform her that she can get the site put back up simply by responding to their letter with a statement that the takedown was a mistake. Finally, require AOL to submit both notice and counternotice to the Library of Congress, where they are placed on a public website.

Some also note that the provision has been widely misused. Chilling Effects estimates that something like 60% of all takedown notices it receives are flawed, but OSPs still takedown the site. Many fail to follow the requirements of the statute. Others ask for material to be taken down that isn't covered by the statute, like trademark infringement, defamation, circumvention devices, product/CD keys, and other disfavored speech.

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