If you allow users to generate content of their own and upload it to your website, you should consider registering a Digital Millennium Copyright Act (DMCA) agent with the U.S. Copyright Office. This filing may shield you from expensive and lengthy copyright infringement lawsuits.
The DMCA has safe harbor provisions that are designed to protect online service providers from liability if their users upload infringing copyrighted material. In order to receive safe harbor protection, you must comply with certain requirements (for example, not being directly aware of any infringements, removing infringements when notified and not receiving direct financial benefit from any infringing activity). Procedurally, one of the most important steps you must take to receive safe harbor protection is registering a DMCA agent with the U.S. Copyright Office. The agent’s purpose is to act as the point of contact who will be contacted with DMCA takedown notices if a copyright holder believes his or her ownership rights have been infringed.
Failing to strictly comply with the DMCA procedural requirements can be fatal. The following two cases illustrate not only the importance of DMCA agent registration, but also how critical it is to accurately register on time.
Allvoices.com: DMCA Safe Harbor Not Retroactive
Allvoices is an online service provider that maintains a community-driven platform for the exchange of ideas as well as graphical, written and audio content. Allvoices provides users with financial incentives to upload content to the site and treats such users as “citizen journalists” and independent contractors. In January of 2011, one of its users shared photos owned by photographer David Oppenheimer. After being contacted by Oppenheimer and removing the images, Allvoices 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.
In 2014, Oppenheimer sued for copyright infringement. Allvoices filed a motion to dismiss and argued that it was protected by the DMCA safe harbor for all alleged infringements, not just those occurring after it had designated its DMCA agent. The court rejected this argument stating that DMCA safe harbor protection does not extend to infringement that occurs prior to a proper DMCA agent designation.
Hollywood Fan Sites LLC: DMCA Registration Must Be Complete
Hollywood Fan Sites claimed to be a collection of “fan sites” that were operated by individual webmasters talking about famous celebrities. Some fan sites uploaded photos owned by BWP Media to the websites. BWP Media filed a lawsuit against Hollywood.com, LLC (Hollywood) and two of its subsidiaries, Hollywood Fan Sites LLC (HFS) and Fan Sites Org, LLC (FSO) for copyright infringement. The defendants denied the allegation, claiming that they were protected by the DMCA safe harbor and not responsible for content uploaded by its users.
One of the issues presented in the Hollywood case was whether the subsidiary HFS could rely on DMCA agent designation filed by its parent company “on behalf of and its subsidiaries and affiliates.” The court held that HFS could not rely on this designation, reasoning that the Hollywood designation made no express reference to HFS. The court found it unreasonable to expect “parties attempting to find a provider’s DMCA agent designation . . . to have independent knowledge of the corporate structure of a particular service provider.”
Although the court’s holding on this point turned on the failure of the Hollywood designation to specifically refer to HFS, the court went on to reason that even if the Hollywood designation expressly stated that it included HFS, that might still be insufficient because “it is far from clear that a single designation can cover multiple entities.” The court’s reasoning indicates that, if presented with the issue, a court could find that a single DMCA agent designation covering multiple entities does not qualify the entities for protection under DMCA safe harbor.
Lessons Learned
If the primary purpose of your site is to host content uploaded by others, we highly recommend that you register a DMCA agent designation. If it is a side feature, such as comments on a blog, it may still be worth considering depending upon the amount and types of content. If you decide to register an agent, the lessons to be learned from these cases are clear. Make sure registration is both timely and complete.
If you have any questions about how to file DMCA agent designations or if you are interested in learning more about DMCA safe harbor, please contact Janet Knaus at jknaus@wnj.com or 616.752.2150, Catherine Collins at ccollins@wnj.com or 616.752.2473 or Amber Underhill at aunderhill@wnj.com or 616.752.2797.
