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 multiple company DMCA agent registration that is troubling.
DMCA Agent Registration
The DMCA grants online service providers [websites and apps] immunity from monetary copyright infringement claims based on content uploaded by users. For example, Taylor Swift cannot file a lawsuit against YouTube if a user uploads a video containing a Taylor Swift song to the site. The protection is known as the DMCA safe harbor.
As with much in life, there is a catch. Online service providers must take specific compliance steps to obtain safe harbor protection. Designating a DMCA Agent and registering the identity of the person with the United States Copyright Office is one such step.
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.
Multiple Company Coverage?
The DMCA code and regulations raise a simple question. Can a single DMCA registration with the Copyright Office cover multiple businesses? 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 registering party. As such, the parties argued they should be considered to have registered on the earliest date of registration.
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.”
The court found the defendants’ multiple company DMCA agent registration argument to lack merit given the plain language of the code.
The BWP Media decision creates a trap for the unwary. Most parties registering a DMCA agent with the Copyright Office 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. You could be excused for assuming you could list subsidiaries on the form given “alternative names” is a wee bit vague. Such a conclusion is incorrect according 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, submit 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.