Ninth Circuit rules that DMCA Takedown Notices Must First Consider Fair Use

The United States Court of Appeals for the Ninth Circuit issued a significant ruling this week in the Copyright law realm. In Lenz v. Universal Music Corp.[1], the Ninth Circuit found that a copyright holder who intends to send a Digital Millennium Copyright Act (“DMCA”) takedown notice must first consider whether the potentially infringing material may be considered fair use. The DMCA provides procedures for a copyright holder to request that infringing material be removed from online sources.[2] Under the DMCA, a copyright holder can submit what is called a takedown notice to a service provider, such as YouTube or Google, so long as the copyright holder identifies the copyrighted work, the allegedly infringing material, and states that “the copyright holder believes in good faith the infringing material ‘is not authorized by the copyright owner, its agent, or the law.’”[3] To avoid potential liability the service provider can remove the potentially infringing material in response.[4] If the poster of the content believes the removal was in error then the poster can submit a counter-notification to attempt to restore the content.[5]

Lenz involves a dispute regarding the posting of a twenty-nine (29) second video on YouTube by the Plaintiff, Stephanie Lenz, of her two young children dancing to the song “Let’s Go Crazy” by Prince.[6] The Defendant, Universal Music Corp. was, at the time, the publishing administrator responsible for enforcing Prince’s copyrights and once the video was viewed by one of the Defendant’s representatives, Defendant included the video in a DMCA takedown notification to YouTube.[7] The Plaintiff subsequently was able to restore the video onto YouTube by taking advantage of the DMCA’s counter-notification procedures.[8] The Plaintiff then sued Defendant for making a misrepresentation under 17 U.S.C. § 512(f), among other claims.[9]

The parties disputed whether a copyright holder had the obligation to consider whether potentially infringing material was fair use before sending a takedown notice.[10] The Ninth Circuit noted that the issue of whether fair use is an “authorized use,” so as to fall within the copyright holder’s statement in its takedown notice that the potentially infringing use was not authorized, was one of first impression.[11] The concept of fair use refers to the determination of whether use of a copyright by someone other than the copyright holder can be permissible and is often asserted as a defense to a copyright infringement claim.[12]

Fair use looks at:

  • The purpose and character of use, i.e., whether the use is commercial or not;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • The effect of the use upon the potential market for or value of the copyrighted work.[13]

The Ninth Circuit examined the statutory language of the DMCA and found that anyone who makes fair use of a copyright is “authorized by the law”, and thus, a “copyright holder must consider the existence of fair use before sending a takedown [notice].”[14] The Ninth Circuit then turned to whether the Defendant knowingly misrepresented that it formed a good faith belief that the subject video did not constitute fair use prior to sending the takedown notice and found that a copyright holder need only “form a subjective good faith belief that a use is not authorized.”[15] The Ninth Circuit also found that the willful blindness doctrine may be used, which requires the Plaintiff to prove that the Defendant, before sending a takedown notice, “(1) subjectively believed there was a high probability that the video constituted fair use, and (2) took deliberate actions to avoid learning of this fair use.”[16] If a copyright holder sending a DMCA takedown notice is found liable for a misrepresentation, damages are available and an “‘actual monetary loss’ need not be established as nominal damages can be awarded.[17]

Although this holding appears to be a victory for free speech and open Internet, the Ninth Circuit’s use of a subjective standard will likely make it difficult to impose liability on copyright holders who follow the Ninth Circuit’s holding requiring that fair use be considered first before sending a takedown notice. The Ninth Circuit noted that in order to comply, “a copyright holder’s consideration of fair use need not be searching or intensive. . . . [and] that formation of subjective good faith belief does not require investigation of the allegedly infringing content.”[18] The Ninth Circuit further suggested that the use of automated computer programs or computer algorithms by the copyright holder may be sufficient in some circumstances.[19]

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.

[1] Nos. 13-16106, 13-16107, 2015 WL 5315388 (9th Cir. Sept. 14, 2015).
[2] Id. at 2015 WL 5315388 at *3.
[3] Id.
[4] Id.
[5] Id.
[6] Id. at 2015 WL 5315388 at *1.
[7] Id. at 2015 WL 5315388 at *1-2.
[8] Id. at 2015 WL 5315388 at *2.
[9] Id.
[10] Id. at 2015 WL 5315388 at *4.
[11] Id.
[12] Id.
[13] Id.
[14] Id. at 2015 WL 5315388 at *5-6.
[15] Id. at 2015 WL 5315388 at *6-7.
[16] Id. at 2015 WL 5315388 at *8 (internal citations omitted).
[17] Id. at 2015 WL 5315388 at *9.
[18] Id. at 2015 WL 5315388 at *7.
[19] Id. at 2015 WL 5315388 at *8.

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