Christine Rafin, Esq. serves as Associate General Counsel – Media and Compliance at American Media, Inc. and is a former partner in the New York City law firm of Kent, Beatty & Gordon, LLP, specializing in technology-related legal issues. She is a guest contributor to You(Online).
Whether someone copies and publishes a photograph that you took, a blog post that you wrote or completely mirrors your webpage and passes it off as their own, you have several legal rights. One of the most cost-efficient and expeditious options available to you arises under a federal law known as the Digital Millennium Copyright Act (the “DMCA”).
The DMCA
The DMCA requires Internet Service Providers (“ISPs”) to remove or otherwise disable access to online content that may constitute copyright infringement upon receiving proper notification (a “DMCA Notice”). There are strict requirements for a DMCA Notice to be valid.
How to send a DMCA Notice
In my experience, some clients who have sent DMCA Notices on their own have overlooked the statute’s strict notice requirements. In many instances, the ISP responded by rejecting the notice and refusing to take down the infringing material unless a proper notice was served. It is imperative that your DMCA Notice follow the statute’s requirements to be effective.
So…What are the Requirements?
The DMCA Notice must be in writing and signed by the copyright owner or a person authorized to act on its behalf (e.g., his, her or its attorney). It must be transmitted to the ISP’s designated agent for service of such notices. Finding the designated agent should not be problematic in most cases. Many websites provide step-by-step instructions for the submission of DMCA Notices. These instructions often appear on the website’s homepage through a “Terms” (Terms of Use; Terms of Service, etc.), “Copyright/IP Policy” or other similar link. The U.S. Copyright Office also maintains an online public DMCA Designated Agent Directory that is easily searchable. The database is extensive because ISPs must submit their relevant information to the Copyright Office to fall within the DMCA’s “safe harbor” from copyright infringement liability. If you remain unable to discover the identity of the relevant designated agent, you should be able to get the information through a “WhoIs” search on a site like networksolutions.com.
Once you know where the DMCA Notice must be sent, make sure that you sufficiently identify the work that allegedly was infringed and state that you have an exclusive right to use that work. Of course, the DMCA Notice must also adequately identify the alleged infringing work so that the ISP can locate it and take it down. You must provide your relevant contact information, along with a statement that you have a good faith belief that the use of the material is not authorized. Finally, your DMCA Notice must include a statement under penalty of perjury that its contents are accurate.
What Happens Next?
Upon receiving a proper DMCA Notice, the ISP must respond expeditiously to remove – or disable access to – the alleged infringing material. It also must take reasonable steps to notify the alleged infringer that the material was removed or otherwise disabled. The alleged infringer then has the right to file a “counter notification” to dispute your allegations. Like the DMCA Notice, the counter notification has strict requirements. In many instances, a counter notification is never filed and the case, so to speak, is closed and the material remains down. However, if a proper counter notification is submitted, the ISP must replace the alleged infringing material unless you promptly file a lawsuit seeking a restraining order and provide notice of that lawsuit to the ISP’s designated agent. Then the dispute will be in the court’s hands.
What if I Want to Identify the Infringer and Litigate for Money Damages?
The DMCA also provides an avenue by which you may seek to uncover the identity of the infringer through a pre-litigation subpoena. While this requires legal action to get a court to issue a subpoena to the relevant website, webhost or ISP, a lawsuit, per se, is not necessary. You would have to commence a miscellaneous action in federal district court and file a copy of the DMCA Notice along with a proposed subpoena and sworn declaration attesting to the purpose of the subpoena (e.g., to obtain the alleged infringer’s identity for the purpose of protecting your rights under the DMCA).
Of course, depending on the facts of your case, you may want to continue with a lawsuit against the infringer. There are several issues to consider before litigating a copyright infringement lawsuit, and it is important to note that any significant money damages may only be recovered if you have a registered copyright.
About the Author
Christine Rafin, Esq. is Assistant General Counsel – Media at American Media, Inc. in New York. She regularly speaks and writes on marketing, promotions, intellectual property and technology-related issues.
She is the author of “An Attorney’s Advice for Removing Negative, Defamatory and Infringing Material from the Internet,” published here in conjunction with this article, and the co-author of “What to Do When You Are the Victim of Online Defamation,” published here in June 2014.
The information presented is for informational purposes only, is not legal advice, is not to be acted on as such and is subject to change without notice. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.