Internet Service Provider Liability Under U.S. Copyright Law Paula Pinha, Attorney-Advisor U.S. Copyright Office East Africa Regional Seminar on: Copyright Enforcement in the Internet Era May 2009, Nairobi

Remember the Secondary Liability Theories? Vicarious liability Right and ability to control the infringement Direct financial interest in the infringement Contributory liability Knowledge of infringing activity Material contribution to the infringing activity Inducement liability Distribution of a device with the object of promoting its use to infringe copyright will impute knowledge requirement

Playboy v. Frena (1993) Defendant operated a bulletin board in which its subscribers posted Playboy images Defendant removed infringing content upon notification from copyright owner, but court held him liable for distributing and displaying the infringing works

RTC v. Netcom (1995) Bulletin board operator was not found liable when one of its users posted infringing content online “One cannot be liable unless he has undertaken the allegedly infringing acts volitionally” Court held the defendant to be a passive poster of its subscriber’s content

This uncertainty led to the need for uniform rules that applied to ISPs that did not know or have reason to know of the infringing activity of their subscribers and that do not financially benefit from this infringement ISPs asked for legislation to address their liability in cases like this They got Section 512 of the U.S. Copyright Law

Section 512 Enacted in 1998 as part of the DMCA Tracks the elements of vicarious and contributory infringement theories Creates four separate limitations to liability that bar monetary relief and limit injunctive relief

Section 512 - Goals Added certainty for ISPs Deterrent to litigation Eliminates “unreasonable” liability Creates incentives for ISPs to cooperate with right holders in combating online piracy Allows right holders to stop online infringement as it is happening

Eligibility for Limitations ISP must meet the definition of “service provider” in section 512(k) Bifurcated definitions: stricter definition of service provider for the mere conduit safe harbor ISP must adopt and reasonably implement a policy for terminating subscribers who are repeat infringers (512(i))

Eligibility for Limitations (cont.) ISP must accommodate and not interfere with standard technical measures adopted pursuant to an open, fair, voluntary, multi-industry standards process ISP must meet all of the elements specified in each of the four safe harbors

The Safe Harbors 512(a): transitory digital network communications 512(b): system caching 512(c): information residing on systems or networks at direction of users 512(d): information location tools

Transitory Digital Network Communications “Mere conduit” Material passing through an ISP’s system, such as e-mail Must meet stricter definition of service provider under section 512(k)

Transitory Digital Network Communications Conditions: Transmission initiated by user, not ISP Transmission is automatic, ISP does not select the material ISP does not select the recipients ISP does not maintain a copy of the material

System Caching Material that is requested by a user from other sites and is automatically stored on the ISP’s system to fulfill subsequent requests for the same material Material must be made available online by person other than the ISP Material transmitted between two persons (not ISP) at the direction of one such person Storage is automatic

System Caching Conditions: Material transmitted without modification of content ISP complies with all refreshing, reloading, updating rules ISP doesn’t interfere with technology returning information to the person making the material available ISP must remove or disable access to material once it receives notice from a copyright owner that the material is infringing

Information Residing on Systems or Networks at Direction of User Storage, at the direction of the user, of material residing in system or network controlled or operated by the ISP ISP must not have actual knowledge that the material is infringing, or must not be aware of facts from which infringement is apparent. Once ISP obtains this knowledge, it must remove or disable access to the material ISP must not receive direct financial benefit

Information Residing on Systems or Networks at Direction of User ISP must remove or disable access to the material upon receiving notice ISP must designate an agent to receive notices

Information Location Tools ISP refers or links users to online location with infringing material through search engine ISP must not have actual knowledge that the material is infringing, or must not be aware of facts from which infringement is apparent Once ISP obtains this knowledge, it must remove or disable access to the material ISP must not receive direct financial benefit

Information Location Tools ISP must remove or disable access to material once it receives notice that it is infringing Which brings us to the NOTICE AND TAKEDOWN procedures…

Notice and Takedown Apply to the caching, storage, and information location tool safe harbors For limitation of liability, ISP must comply with the notice, takedown, and putback procedures

Elements of a Notice Must be in writing, sent to ISP or agent Must include identification of copyrighted work, of infringing material, and location of infringing material Must include statement that complaining party has a good faith belief that material is unauthorized and that complaining party is authorized to act on behalf of copyright owner

Elements of Counternotice Must be in writing, sent to ISP or agent Must include identification of removed material and its location Must include statement that material was removed or access was disabled as a result of mistake or misidentification of the material

Notice, Takedown, and Putback Procedures ISP is not liable for removing or disabling access to material based on a notice if ISP complies with the following: Promptly notifies the user that it disabled access to his material If user submits a counternotice, ISP notifies the party who submitted the notice and informs them the material will be replaced in 10 business days ISP replaces material unless it receives notice from the person who submitted the notice they have filed action seeking court order to restrain user from the infringing activity

Usher example (2003) RIAA found a user distributing files containing the word “Usher” and “mp3” and sent Pennsylvania State University a warning. The files were removed However, the files were songs created and performed by Peter Usher, a professor at Penn State. Peter Usher sent RIAA counternotice and his files were replaced

Misrepresentations in Notices and Counternotices Party who sends a notice misrepresents that the material is infringing, or a party sending a counternotice misrepresents that the material was removed or disabled by mistake or misidentification Party is liable for damages incurred by the other party or ISP who is injured by relying on such misrepresentation

Lenz v. Universal (2008) Plaintiff posted video on YouTube of child dancing to Prince’s “Let’s Go Crazy.” Universal Music sent notice and YouTube removed it, but plaintiff sent counternotice asserting fair use and YouTube reposted the video Plaintiff sued Universal for misrepresentation under 512(f) because defendant should have known that the video was not infringing, and the court agreed

Subpoena to Identify Infringer A copyright owner may ask court for subpoena to order ISP to identify alleged infringer ISPs must comply with such subpoenas if they wish to enjoy any of the limitations on liability

Limitations on Liability If ISPs comply with these conditions, they will not be liable for any monetary relief, and will have limited liability on injunctive relief Limited to orders for materials to be taken down or for termination of subscribers Court will consider the burden on the parties, the magnitude of the harm if no injunctive relief, whether injunction is technically feasible or effective, and whether there are other less burdensome means of preventing access to the materials

Viacom v. Google (2007) Lawsuit over videos uploaded on YouTube Google has claimed the protection from one of the section 512 safe harbors, among other defenses Case still pending

Questions?

Office of Policy and International Affairs Thank You! Paula Pinha Attorney-Advisor Office of Policy and International Affairs U.S. Copyright Office ppin@loc.gov