The Digital Millennium Copyright Act (DMCA) allows a copyright holder to send a takedown notice to an online service provider that is hosting a copyright-protected work posted by a third party. But, lest the law be used to suppress lawful speech, the DMCA requires that a takedown notice contain (among other things) a “statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law,” and certify, under the penalty of perjury, that the information in the notification is accurate.
What if someone sends a takedown notice that is authorized by the law, and does so in bad faith? The law provides that -
[a]ny person who knowingly materially misrepresents under this section . . . that material or activity is infringing . . . shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer . . . as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing . . ..
But there is a hidden nuance to the law: what if the takedown notice demands takedown of a work that the complaining party owns, but where the use that is the subject of the notice is protected by the copyright fair use doctrine? In other words, what if the takedown notice is based on a misrepresentation that a fair use is infringing? Should such a notice be viewed as a misrepresentation, and the complaining party subject to penalties?
This is the issue before Massachusetts U.S. District Court Judge Richard Stearns in Tutuer v. Crosley-Corcoran. Without getting into the sordid details of this case, it’s enough to say that the case arose out of an online conflict between two bloggers, during which Crosley-Corcoran posted a photo of herself giving Tutuer the finger.* Tutuer, in turn, posted the image on her website without Crosley-Corcoran’s permission. On thing led to another, and eventually Crosley-Corcoran sent a DMCA takedown notice to Tutuer’s ISP. Tutuer filed suit, claiming that her use of the image was fair use (and therefore was “authorized by . . . the law”). Crosley-Corcoran’s takedown notice was, she alleged, an invalid notice, and therefore an abuse of the DMCA.
*Or, as Judge Stearns put it, “a graphic gesture with her middle finger that is often associated with an unrealized ambition of French soldiers at the Battle of Agincourt.”
Crosley-Corcoran, who lives in Illinois, filed a motion to dismiss based on lack of personal jurisdiction in Massachusetts. However, in reviewing the case Judge Stearns focused on an additional issue, one that Crosley-Corcoran had not herself raised. As Judge Stearns put it:
the court seriously questions whether Tuteur has stated a viable cause of action against Crosley-Corcoran. The takedown notice at issue appears to conform to the letter of the requirements of … the DMCA. In it, Crosley-Corcoran states accurately that her likeness has been copied without her express authorization and published by Tuteur without permission …. It is true that if the tables were reversed, and this was a lawsuit brought by Crosley-Corcoran against Tuteur for copyright infringement, Tuteur would have a plausible, and even dispositive fair use affirmative defense, … . But there is no requirement in the DMCA that a notice-giver inform the service provider of an infringer’s possible affirmative defenses, only that she affirm her good faith belief (as appears to be the case here) that the copyrighted material is being used without her (or her agent’s) permission. Seen in this light, there is no material misrepresentation by Crosley-Corcoran of infringement, as a viable cause of action …
Judge Stearns issued an Order to Show Cause, giving Tuteur 21 days—until May 1, 2013—to show why the case should not be dismissed on the merits of the DMCA improper takedown notice claim (and to address, as well, Crosley-Corcoran’s claim of lack of personal jurisdiction).
Tutuer filed her response yesterday. Also, the Electronic Frontier Foundation and Digital Media Law Project filed a motion for leave to file a joint amicus brief, along with their proposed brief. (Both briefs linked below).
Clearly, Judge Stearns’ Order raises a thorny issue under the DMCA, and one that is not expressly addressed in the statute. On the one hand, given that the question whether a work is subject to fair use is highly fact-dependent and is often the subject of extensive legal debate, how is the court to deal with an alleged improper takedown based on lawful fair use? Adjudication of this issue would require a trial to determine whether the fair use doctrine applied, and whether the copyright owner that sent the takedown notice had a subjective good faith belief that the work in question was not authorized under the fair use doctrine. Given the fact that a losing wrongful takedown notice defendant is subject to attorney’s fees, the party issuing the takedown is suddenly at potentially significant financial risk. Even if the actual damages are small, the attorney’s fees could be enormous.
On the other hand, there are many examples (some of which are provided in the EFF brief), in which the DMCA takedown procedure has been abused in order to silence lawful commentary making fair use of the work that is the subject of the notice. The DMCA should not be a weapon that copyright owners can use to force the removal of fair use free speech that they dislike.
How is Judge Stearns to decide this issue? It is an issue of first impression in this circuit, so Judge Stearns has no controlling precedent to guide him. In fact, no district court in the First Circuit has addressed this issue. Tuteur and the EFF rely on 9th Circuit district court cases, which are not binding on Judge Stearns, and may not even be persuasive to him. The leading reported case, upon which Tuteur and the EFF rely, is Lenz v. Universal Music (N.D. Cal. 2008). That case holds that an allegation that a copyright owner acted in subjective bad faith by issuing a takedown notice without proper consideration of the fair use doctrine is sufficient to state a misrepresentation claim under the DMCA. However, even in that case the court noted that it had “considerable doubt” that the plaintiff would be able to prove that the defendant acted with subjective bad faith.
The answer, unfortunately, is that Judge Stearns may avoid the issue altogether by holding that personal jurisdiction over Crosley-Corcoran is lacking in Massachusetts, and therefore decline to reach the more difficult issue of whether Tuteur has a claim arising out of a wrongful takedown notice. That would be too bad, since Judge Stearns is in a position to help develop the law around takedown misrepresentations based on fair use, and possibly advance this case to the First Circuit, which would become the first federal circuit court to squarely face the issue.