1. 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

2. 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

3. 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

4. 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

5. 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

6. 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

7. 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

8. 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))

9. 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

10. 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

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

12. 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

13. 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

14. 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

15. 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

16. 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

17. 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

18. 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…

19. 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

20. 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

21. 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

22. 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

28. 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

29. 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

30. 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

31. 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

32. 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

33. 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

34. Questions?

35. Office of Policy and International Affairs
Thank You!
Paula Pinha
Attorney-Advisor
Office of Policy and International Affairs
U.S. Copyright Office