A Warning for DMCA Filers

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If you routinely file DMCA notices, you may want to take heed of the recent ruling in the case of Perfect 10 v. Amazon.com.

In the case, Perfect 10, perhaps one of the most famous copyright litigators (and losers), filed suit against Amazon.com for contributory copyright infringement. The story is that Perfect 10 filed a series of eight DMCA notices regarding infringement of its images made available through A9, an Amazon subsidiary, and none of the notices resulted in a takedown. Perfect 10, after seeing this filed suit against Amazon and claimed that they had waived their DMCA save harbor protection by not complying with the notices.

However, there was a very serious wrinkle with Perfect 10’s case, namely that they had filed all of the notices with Amazon and A9 separate company. The judge, in turn, ruled that doing so does not provide actual notice to A9, especially since A9 has their own DMCA procedure, has designated a DMCA agent and is registered with the U.S. Copyright Office (PDF).

The judge also ruled that the use of a form on A9’s site, as opposed to an email, is immaterial and does not remove A9’s protection under the DMCA and that, even if Amazon hosted the A9 website (which it appears to), it was not required to communicate Perfect 10’s notices.

The end result was that Perfect 10’s copyright claims against A9 were thrown out on the summary judgment.

It is also easy to see how this could affect any filer of DMCA notices and it is something to be cautious of.

What This Means

What this case means is fairly simple, you need to be absolutely sure you are filing the DMCA notice with the company that is either hosting (for Section 512(c) notices) or linking to (for Section 512(d) notices) the infringement. It is not adequate to simply notify their owners and expect that the notice will be passed along.

Specifically, there are two potential situations at stake:

  1. Company A Owns Company B: If company B is hosting or linking to an infringing work, notifying company A is not adequate. This is only true so long as company B is a separate entity, but happens to be owned by A. A good example in this case would be Google and YouTube. Google owns YouTube but YouTube operates as a separate LLC (see the footer of the site). You could not file a takedown notice with Google’s agent and expect YouTube to respond.
  2. Company A Hosts Company B: This is a situation common with hosting resellers or, more famously, with ThePlanet and Hostgator (ThePlanet currently hosts Hostagotor’s servers). In this case. Filing a notice against ThePlanet would not count as filing a notice with Hostgator and strip their protections under the DMCA should they fail to comply.

However, this ruling places a limitation on itself. Namely, it says that this is only true “where the two ISPs are distinct corporate entities and, more importantly, have each properly designated its own copyright agent.” Therefore, it is unclear what the situation would be if in a reseller failed to provide DMCA information and a copyright holder filed with the company over them, such as ThePlanet.

In the case of ThePlanet, DMCA notices are passed along and takedowns are completed, even though this ruling says it is not necessary.

While this makes sense on the surface, namely that no ISP should be responsible legally for forwarding on a notice to another, the problem with it is more technical in nature.

The Russian Doll Problem

Let’s imagine a scenario. A spammer sets up a domain at site xtremespam.spam (XS) (I’m intentionally not using valid domains) and hosts site with cheapohostingprovider.host (CHP).

If CHP owns their own servers, designates their own DMCA agent, everything works out well. But if CHP is a reseller for Hostgator, things fall apart quickly. CHP leases their servers from Hostgator, Hostgator in turn leases their servers from ThePlanet. Anyone who does a check on Domain Tools will that ThePlanet owns the IP address and runs the datacenter, however, they are two steps removed from the host.

This is the nature of the Russian Doll problem, you have a host, inside a host, which is inside another host. Using networking tools, we can only see the outside “Doll”. Through some detailed analysis, we might be able to recognize Hostgator as the host (since they are large enough and are recognizable) but every additional layer makes it more and more difficult to find the original host.

In short, if the CHP is viewed as a “distinct corporate entity” and has its own DMCA agent, Hostgator nor ThePlanet, theoretically, are obligated to pass along the information. With enough obscurity and layers, it could be almost impossible to find out CHP exists, much less that they host XS and that could prevent the filing of a proper notice against them.

Even though I am picking on these companies I wish to be VERY clear that ThePlanet does pass along notices (and I assume they will continue to do so) and both are very good about handling DMCA issues. However, they do illustrate the potential for this system to be abused and a possible hole in the safe harbor system that can prevent copyright holders from having an effective means of recourse.

What’s Needed

What is clearly needed is some clarification on this issue. What should happen when the actual host of a site can not be easily found but the company that hosts them can be? While I agree that the law should not force a company to forward on such notices (though I also believe ethics and common decency should), it is clear that something has to be done.

One idea would be to require the hosting company, when notified of an infringement taking place on their network but not under their control, to notify the filer of who the correct party is. However, that might actually create a worse burden than simply forwarding it along.

Another option might be to mandate that Web hosts have a way to clearly identify the sites that they host, however, that seems impractical with the current structure of the Web.

In the end, there aren’t many solid solutions to this problem. Though I have gotten very good at dealing with this issue in my own work, it’s only come with years of practice and a decent understanding of how to use various networking tools. Even then though, there are still limitations to what those tools can do. Also, though WhoIsHostingThis does a great job piercing the veil on some of the better known resellers, including Hostgator, it can not get them all.

In short, this ruling may, inadvertently, make it possible for hosts to hide in plain sight, avoiding ever receiving or being forced to act upon a valid takedown notice.

Bottom Line

My frustration with this problem is simple. Though I agree that Perfect 10 was in the wrong in this case (considering that A9 was clearly the service provider and did have its own DMCA agent), it also appears to me that Amazon was behaving less than ethically. It would have been trivial for them to forward on the misdirected DMCA notice but failed to do so.

However, Amazon is known for frustrating copyright holders. I am working with one band who is struggling to get a bootleg CD of theirs out of the Amazon store and I know many others that have had similar frustrations. Though Perfect 10 could have avoided this by simply doing proper research filing correctly, Amazon also had a role in forcing this showdown and, as a result, we now have a ruling that could have a much more broad impact on filing DMCA notices and leave holes in the safe harbor system.

I don’t think it was the intent of the DMCA to create this issue nor do I think the intent was to overly burden ISPs. As such, it is obvious that some compromise and clarification is needed.

Until then, the good news is that most IPSs will likely continue to forward DMCA notices to their subsidiaries. The reason being that it is not only the right thing to do, but also cheaper and easier than dealing with a lawsuit, even if they have the ability to win it.

Furthermore, no legitimate ISP wants to allow copyright infringement, spam and other issues to take place on their servers, it hurts others that host with the company and it is in everyone’s benefit, in the long run, that the issues are addressed.

Still, until there is clarification, it is important to be absolutely certain that you have the original host of a site when you file your notice. It is the only way to completely avoid these issues.

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