If you are thinking about issuing a take-down notice to a website on which you have found material that infringes your copyright, make sure that you include sufficient detail on the identity and location of the infringing works. The case law indicates that the courts are taking an increasingly Arminian view (i.e., demanding “sinless perfection) of the detail that must be provided in a take-down notice to meet the Digital Millennium Copyright Act’s (DMCA) “substantial compliance” rule. 17 U.S.C. § 512(3).
The text of the DMCA provides that a take down notice must provide “information reasonably sufficient to permit the service provider to locate the material.” However, in many cases Court have ruled that to be effective take-down notices must identify the specific location of each infringing copy of a work. For example in Hendrickson v. eBay, Inc., 165 F. Supp.2d 1082 (C.D. Cal. 2001), in which the plaintiff claimed that eBay was permitting the sale of pirated copies of a movie on its site, the Court indicated that the plaintiff needed to “include the specific item numbers of the listings that are allegedly offering pirated copies of Manson for sale.”
There is one prominent case in which a plaintiff was allowed to take a shortcut in specifying the location of pirated material on a website — ALS Scan, Inc. v. RemarQ Communities, Inc., 239 F.3d 619 (4th Cir. 2001). However, the facts of this case are somewhat unusual — and do not represent the standard infringement scenario typically encountered when dealing with the interactive websites common today. The plaintiff, ALS, was in the business of creating and marketing adult photographs, and held the copyright for these photographs. The defendant, RemarQ, was an internet service provider that also hosted 30,000 newsgroups. Two of the newsgroups hosted by RemarQ actually included ALS’s name in their title: “alt.als” and “alt.bniaries.pictures.erotica.als.” Both of these newsgroups contained hundreds of ALS-copyrighted photographs.
ALS sent RemarQ a take-down notice that referenced these newsgroups, stated that they were created for the sole purpose of violating its copyrights and trademarks and demanded that RemarQ cease carrying the newsgroups. RemarQ refused to remove the newsgroups, but agreed to removed individual postings that infringed ALS’s copyright if ALS identified them “with sufficient specificity.” Id. at 621. ALS sued RemarQ, which defended by claiming that ALS had not substantially complied with the DMCA take-down notice standard and also that RemarQ had no knowledge of the alleged infringement. RemarQ argued that ALS had never provided it with a “representative list” of the infringing photographs and never identified that photos with sufficient detail for RemarQ to remove them.
The Fourth Circuit disagreed. It found that because ALS had identified the two sites “created for the sole purpose of publishing ALS’s copyrighted works”, asserted that “virtually” all the images on the sites were its copyrighted material, and referred RemarQ to the specific addresses of the website — this was sufficient. Id. at 625 (emphasis added).
However, in the modern world of interactive media, the circumstances that occurred in ALS v. RemarQ will be rarely repeated. Often, a copyright holder will find its works scattered in snippets throughout hundreds of thousands or millions of files on a website. In such cases, a take-down notice that fails to state the locations where the infringing materials can be found is likely to be found insufficient.
For example, in Arista Records, Inc. v. MP3Board, Inc., 2002 WL 1997918 (S.D.N.Y. 2002), the court examined the substantial compliance of three different take-down notices sent by the RIAA to a file-sharing site that provided users with links to other sites where pirated copies of copyrighted music were located. In the first two notices, the RIAA merely listed artists whose work was allegedly being infringed and asked MP3Board to remove links to these works. In the third notice, the RIAA named 21 artists and song titles which were representative of the works being infringed and attached printouts of MP3Board screen shots on which the RIAA indentified 662 links to infringing material.
The Court found that the first two notices fell far short of substantial compliance with the DMCA take-down notice rules. However, the third notice was sufficient because it “identified the material or activity claimed to be infringing and provided information sufficient to permit MP3Board to locate the links.” Id. at *9.
Recent cases have continued to find take-down notices non-compliant where they have failed to easily permit a service provider to locate the infringing material — such as Perfect 10 v. CCBill LLC, 481 F.3d 751 (9th Cir. 2007). The adverse consequences of failing to craft a sufficient take-down notice can be substantial, including having your subsequent suit for copyright infringement dismissed or even opening up yourself to a counter-suit for misrepresentation under 17 U.S.C. § 512(e)(2). So it is important to take the time to make sure that you get your take-down notice right.
If you have any questions about the sufficiency or effect of a take-down notice you wish to send or have received, feel free to contact me or a member of JMBM’s intellectual property practice group.