The recent BWP Media v. Hollywood Fan Sites LLC et. al. ruling is receiving a good bit of attention. The primary focus has been on the issue of when a DMCA Agent registration with the United States Copyright Office becomes effective. However, the court raised a secondary issue regarding the number of service providers that can be covered by a single registration, language that should serve to alarm many online providers.
The DMCA grants online service providers [sites and apps allowing users to post text, photos, videos, etc.] immunity from monetary copyright infringement claims based on content uploaded by users. For example, YouTube cannot be sued by Taylor Swift if a YouTube member uploads a video containing a Taylor Swift song. The protection is known as the DMCA safe harbor.
As with much in life, there is a catch. Online service providers must take certain compliance steps to obtain the safe harbor provision. One of the easiest steps is to designate a DMCA Agent and register the identity of the person with the United States Copyright Office.
The language of the DMCA requires:
[17 U.S.C. 512(c).]
“(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.
The DMCA code and regulations raise a simple question. Can multiple businesses be covered by one registration form or must the companies each file a separate registration? In BWP Media, one of the defendants registered their agent much earlier than the other two defendants. The two tardy defendants attempted to argue they were subsidiaries of the early registering party. Carrying the theory to its logical end, the two tardy defendants argued they should be considered to have registered on the earliest date of registration – an interpretation that would greatly limit their liability in the case.
The Honorable J. Paul Oetken quickly dismissed the claim. In doing so, Judge Oetken noted the Copyright Office had issued clear regulations on the topic:
[37 CFR 201.38.]
“During the interim period before final regulations are promulgated, each Interim Declaration may be filed only on behalf of a single service provider. For purposes of these interim regulations, related companies (e.g., parents and subsidiaries) are considered separate service providers who would file separate Interim Designations.”
Given the DMCA code contains a clause authorizing the Copyright Office to issue such regulations, the court found the defendants argument to lack merit.
The BWP Media decision creates a trap for the unwary. Most parties registering a DMCA agent with the Copyright Office, including lawyers, use the pre-printed form provided by the Copyright Office. The first two lines of the form ask for the name of the service provider and any alternative names. “Alternative names” is legally vague, and one could be excused for assuming subsidiaries could be listed on the form. Such a conclusion is incorrect pursuant to the BWP Media ruling and Copyright Office regulations.
There are a few simple rules any online service provider should follow with their DMCA agent designation. First, register the agent with the Copyright Office before the site or app goes live. Second, register a separate application for each online provider. By the way, this is hardly the only case where a DMCA issue has cropped up. Take a look at this case and this case for others.