Getting DMCA Safe Harbor Right

It’s a simple but brutal truth. If you are in the United States and you have a website that users can upload content, you strongly need to consider registering an agent to receive notice of copyright infringement. It’s a $105 fee that can prevent a copyright infringement lawsuit.

The reason is because the Digital Millennium Copyright Act (DMCA) has safe harbor provisions that are designed to protect such sites, ranging from small forums to sites such as YouTube, from liability should their users upload copyright infringing material. This means that, if one of your users uploads infringing content, you don’t have to be liable for that infringement.

However, that protection is not automatic and must be earned. According to the law, your service has to meet a slew of requirements, such as not being directly aware of any infringements, removing infringements when notified and not receiving direct financial benefit from any infringing activity you can control.

But the thorniest requirement is the registration of a DMCA agent for your site. While it makes sense that, if you’re going to respond to notices of copyright infringement you need a person to receive it., the law requires more than that. Not only does that person’s info need to be placed on the site, it needs to be registered with the U.S. Copyright Office.

Recent cases have made it very clear not just how important this registration is and how important it is to get it right. That’s because, even if you do everything else correctly, failing to fill out a Copyright Office registration or filling it out incorrectly can cost you your safe harbor protections, leaving you liable.

With that in mind, here are two cautionary tales about DMCA safe harbor gone wrong and an important lesson on how to get it right.

Allvoices.com: DMCA Safe Harbor Not Retroactive

Launched in 2008, Allvoices.com called itself “a platform for citizen journalism” and encouraged users to upload and share newsworthy content. Unfortunately, in January of 2011, one of the users shared photos owned by photographer David Oppenheimer.

Though Oppenheimer reached out to Allvoices, since the site had not designated a DMCA agent, it took until March 2011 for him to get the images removed.

Almost immediately after removing the images Allvoices recognized its mistake and filed to register a DMCA agent. The U.S. Copyright office received the form on March 31 and scanned it in on April 19, bringing the site into compliance.

However, the damage had already been done. Oppenheimer sued in 2014 and, when the issue of safe harbor came up, Allvoices argued that it had a DMCA agent registration at the time the lawsuit was filed. But the court found fault in that logic and said the protection was not available at the time of infringement and was not retroactive.

In short, Allvoices lost its DMCA safe harbor protection and then found itself in expensive and lengthy litigation. That litigation was brought to an end a year ago after a mediated settlement. While the terms of the settlement aren’t known, the case didn’t need to have gotten to that point, if Allvoices had just properly registered a DMCA agent in its first three years of business.

Hollywood Fan Sites LLC: DMCA Registration Must Be Complete

Hollywood Fan Sites, located at Hollywood.com, claimed to be a collection of “fan sites” that were operated by individual webmasters talking about famous celebrities.

However, when some of those fan sites uploaded photos owned by BWP Media, a lawsuit began that not only looked at how the business itself was operated, but at whether or not the site qualified for DMCA safe harbor protection.

Initially BWP claimed that Hollywood Fan Sites was a fake that the “webmasters” were just sock puppets operated by the site’s owners. In response, Hollywood Fan Sites denied the allegation, claimed that it was protected by DMCA safe harbor and that it was not responsible for content uploaded by its users.

To that end, Hollywood Fan Sites seemed to have a solid case:

Unfortunately for Hollywood Fan Sites, LLC, the issue was the third item. Though their parent company had indeed timely registered, that registration did not cover the subsidiaries. To show this, the court cited the language from the Copyright Office’s regulations.

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.

In short, each subsidiary needed to have their own registration and, since Hollywood Fan Sites LLC didn’t have one, the court ruled it did not have safe harbor protection.

As with Allvoices, the case went into mediation and was eventually settled out of court under undisclosed terms.

Still, also as with Allvoices, there was no need for the case to go this far.

Getting DMCA Safe Harbor Right

When it comes to DMCA safe harbor, it’s important to make sure that you get it right. As these cases show, it’s entirely possible to have the best of intentions and completely lose your safe harbor status.

Fortunately, it’s not very complicated, it just requires some degree of planning and a willingness to invest some time and money into addressing the issue.

Here are the key steps to take:

1. Complete and fill out the Copyright Office’s Interim Designation of Agent to Receive Notification of Claimed Infringement form. The form itself is fairly straightforward but bear in mind you need to include the full legal name of the service provider.
2. Be sure to list all of the sites and alternative names you are and will be doing business under. Filing one registration with multiple names is much cheaper than filing multiple registrations.
3. Complete a separate registration for each subsidiary company. Remember, each registration only protects one company.
4. Mirror the information on your site. A common place to put it is in your terms of service though many hosts create special copyright pages to host the information.
5. Update the information with the U.S. Copyright Office as changes take place. This includes when the contact information changes or when you bring new services online.
6. When and if you do get notices of copyright infringement at this contact information, respond expeditiously and remove or disable access to the infringing material.
7. Likewise, if you become aware of a specific infringement, remove or disable access to it as well.

If you desire help with this or don’t wish to have your contact information become public, there are many services, including mine at CopyByte, that can provide assistance for a small fee.

While there are definitely real costs with filing a registration, at the bare minimum the $105 to file a single registration, those costs are easily dwarfed by any potential legal expenses that could come from a copyright infringement lawsuit.

That makes the costs, for most sites, pretty reasonable, even if they are still unpleasant.

Bottom Line

When it comes to DMCA safe harbor, the most common question I get asked is “How important is this really? How likely am I to run into trouble?”

The answer varies wildly from site to site and service to service but the truth is this: If you are a good actor, make yourself available, remove infringing material when notified and don’t allow your service or community to become a haven for infringement, the odds of trouble are very low, even if you aren’t 100% technically in compliance.

That being said, as the cases above show, these types of lawsuits do happen and when you consider that a one-time fee can prevent these kinds of problems, not having the registration is playing a reverse lottery.

If the primary purpose of your site or service is to host content uploaded by others, a registering a DMCA agent probably makes sense. If it’s a side feature, such as comments on a blog, it may still be worth considering depending upon the amount and types of content that is uploaded.

But if you’re going to do set up a DMCA agent, it’s worth taking the time to do it right. The only thing worse than not having one is thinking that you’ve jumped through the hoops only to learn that you aren’t protected at all.

As these two sites found out, the protection is there but it’s not automatic. It’s up to you to make sure that your registration is complete, timely and will keep you safe.