The DMCA insulates websites allowing user-generated content from copyright infringement claims so long as sites take specific compliance steps. One of the easiest steps is the designation and registration of a DMCA agent. Unfortunately, online businesses continue to screw up this simple step and expose themselves to copyright infringement lawsuits.
Stories about celebrities bring in the traffic online. Whether the story is about Kim Kardashian, George Clooney or another star, photos of the stars can be big business. What many people do not understand is photographers copyright the photos they take of celebrities. Republishing the pictures without paying a licensing fee to these photographers raises copyright infringement concerns.
If you allow users to post content on your site, celebrity images are almost always going to be a problem. Fortunately, the DMCA can provide protection so long as a website complies with the requirements of the law. Failure to do so exposes a website to a world of legal hurt. A number of Hollywood fan sites just learned this painful lesson.
DMCA Agent Problems
On June 30, 2015, the Honorable J. Paul Oetken issued a ruling on a summary judgment motion in a case known as BWP Media USA v. Hollywood Fan Sites LLC. The ruling emphasizes how important it is to strictly follow the safe harbor immunity requirements of the DMCA.
The case involves multiple copyright holders suing three companies who run over 4,500 celebrity fan sites. The plaintiffs allege their copyrighted images were published on the defendants’ sites by users without permission. Such use constitutes copyright infringement.
As one would expect, the defendants asserted the DMCA safe harbor provisions invalidated these claims as a matter of law. The plaintiffs, in turn, filed the current summary judgment motion arguing the defendants failed to properly and timely file DMCA agent designations, which waived the protections available under the law.
As Judge Oetken summarized nicely,
“At issue in this motion is § 512(c)’s requirement that a service provider “designate an agent to receive notifications of claimed infringement.” 17 U.S.C. § 512(c)(2). To effectively make such a designation, “[t]he statute requires that the service provider make ‘available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information: the name, address, phone number, and electronic mail address of the agent.’”
Because there are multiple defendants in this case, a discussion of the timing of the various DMCA filings can be confusing. Generally, the court found the defendants failed to register DMCA agents with the United States Copyright Office prior to some or all of the offending content being posted on the fan sites. Given this finding, Judge Oetken ruled the defendants did indeed waive the DMCA safe harbor provisions for any celebrity images published on the sites prior to the dates of the agent registrations with the Copyright Office.
Two of the defendants also tried to argue a unique interpretation of the DMCA. The facts of the case reveal one of the defendants registered its DMCA agent as early as 2008 while the other two defendants did not file until around the time the lawsuit began. These two defendants argued they should be considered subsidiaries of the early filing defendant, and should be covered under the DMCA agent registration of the parent company.
While a creative argument, the defendants faced one insurmountable problem. The agent registration form, known as the “Interim Designation of Agent to Receive Notification of Claimed Infringement,” specifically asks the registering party to list:
“Alternative Name(s) of Service Provider (including all names under which the service provider is doing business)”
In this case, the registration form filed by the parent company did not mention the other two defendants or any of their websites. Game. Set. Match. The court ruled in favor of the plaintiffs and went on to note that it is unclear if a DMCA agent registration can even cover more than one company at a time.
In a last gasp gesture, the defendants argued that registration with the Copyright Office was not required to maintain the safe harbor protections where the company publishes the agent information on the websites in question. The court correctly noted such an argument simply ignores the clear language of the DMCA reading:
(2) Designated agent. — The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:
(A) the name, address, phone number, and electronic mail address of the agent.
(B) other contact information which the Register of Copyrights may deem appropriate.[18 U.S.C. 512(c)(2)]
The lesson you should learn from BWP Media USA v. Hollywood Fan Sites LLC is simple. If you allow user-generated content on your site, you must follow the detailed requirements of the DMCA to maintain immunity from copyright infringement liability. Before you launch the website, select a DMCA agent, register the agent with the Copyright Office and list the agent on your site as part of the DMCA policy. Anything less and you risk exposing yourself to copyright infringement claims.