5 ways companies can stay in compliance with DMCA

By Heather Smith-Carra
December 21, 2017

Compliance DMCAUnderstanding the Digital Millennium Copyright Act (DMCA) has become increasingly important for companies that want to protect their digital content. The DMCA was created primarily as a solution for service providers such as YouTube that host content uploaded by third parties rather than create their own original content. Service providers benefit from the DMCA because it protects them from liability in the event content uploaded to their site infringes another’s copyrights.

While the DMCA addresses a number of copyright issues, the “safe harbor” provision remains one of its most important aspects. Online service providers that provide electronic storage, search engines, directories, and other information can benefit from safe harbor protections. However, providers seeking to benefit from DMCA protections must comply with certain provisions, some of which are addressed below.

1. Submit a new online service provider agent designation.

December 31, 2017, ends the U.S. Copyright Office’s period for transitioning from paper to online service provider agent designations. The Copyright Office introduced a new online registration system and service provider agent directory in December 2016, to replace its paper-based system. Paper designations for service provider agents are no longer accepted. Additionally, the Copyright Office now provides a publicly available online directory of contact information for all designated agents. The database is useful for determining the appropriate party to contact in the event a takedown notice needs to be filed.

To receive DMCA infringement claims, a service provider agent must be designated with the Copyright Office. A designation includes providing the Copyright Office with the agent’s up-to-date contact information. Agent designations made with the office prior to December 1, 2016, will expire after December 31, 2017. Service providers must electronically designate an agent by December 31, 2017, to benefit from safe harbor protection. Visit the DMCA website to register or re-register an agent before the deadline.

2. Establish notice and takedown procedures.

Another aspect of the DMCA is the notice and takedown procedure. Under this procedure, copyright owners may submit a list of allegedly infringing content to a service provider’s designated agent. Once a service provider has been made aware of infringing content, the DMCA requires the content be expeditiously removed.

Service providers are encouraged to establish internal notice and takedown procedures for removing infringing content. Establishing notice and takedown procedures is particularly important for companies allowing users to post content on their websites. Notice and takedown procedures are also beneficial for ensuring that takedown notifications are timely and accurately addressed. Service providers may even escape monetary liability when infringing content is promptly blocked or removed from their sites.

As part of notice and takedown procedures, it is best practice to include a policy for terminating accounts of repeat infringers. Repeat infringer policies are key for service providers because of DMCA Section 512(b), which requires that providers immediately take down infringing content.  If a party sends multiple takedown notices to a provider to no avail, that party can bring a claim against the service provider for its failure to expeditiously remove and/or block the infringing content.

In addition to maintaining a notice and takedown procedure, companies should include information about their DMCA policies on their websites in the Privacy Policy or Terms of Use sections. It is best practice to outline your company’s policies regarding the ways in which it handles DMCA complaints to put users on notice.

3. Avoid using another’s copyrighted materials on your website.

Companies may receive a DMCA takedown notice in response to web content that is allegedly being used without permission of the copyright owner. By affording copyright notices when displaying another’s copyrighted material, companies can help protect against DMCA complaints. When in doubt, contact copyright owners to request permission to use their work on your site.

For companies with interactive websites, such as those with message boards, blogs, and comment sections, regular monitoring of posts is crucial. Content uploaded by third parties, including both text and photographs, should be reviewed regularly to check for copyright infringement. Failure to monitor and take action against infringing content can expose a company to liability.

4. Use links for referencing online material located on another site.

The DMCA’s safe harbor provision Section 512(d) states that service providers will not be held liable for referring or linking users to a site containing infringing material. Rather than directly posting content on your site, a better practice is to refer to or provide a link to content that is located elsewhere. By providing a link to the original content instead of reposting that content, companies can avoid monetary damages.

To benefit from Section 512(d), the DMCA requires that the content provider:

  1. not have actual knowledge that the linked material is infringing;
  2. not gain financial benefit from the infringing content if the content provider has the right and ability to control that content; and
  3. expeditiously remove or block access to allegedly infringing content upon receiving notice of the infringing content

5. Monitor the web for infringing content and file takedown notices where appropriate.

When encountering content that infringes your company’s copyrights, one response is to send a notice to the service provider to request a takedown of the content. The following are required in a takedown notice:

  1. the electronic or physical signature of the copyright owner;
  2. identification of the copyrighted work;
  3. a description of and link to the infringing content;
  4. the owner’s name and contact information; and
  5. a sworn statement that he/she is the owner, and did not provide permission for the content to be uploaded to the site.

Before sending a takedown request, it is crucial to save a copy of the allegedly infringing content. Once the takedown request is processed, the content will be removed and no longer accessible, assuming the request is successful. Maintaining a record of the content will be useful should future issues arise with the infringer.

Section 512(g) permits a subscriber to file a counter-notification with the service provider after receiving a takedown notice. A counter-notification is an opportunity to respond to and contest the filing of a notice and takedown after content has been removed. If successful, a counter-notification can result in the content being restored to the site.

The following are required when submitting a counter-notification:

  1. the name, address, telephone number, and signature (physical or electronic) of the subscriber;
  1. identification and location of the removed or disabled content prior to it being removed or disabled;
  2. a statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled because of a mistake or misidentification; and
  3. a statement that the subscriber consents to the local federal court and that the subscriber will accept service of process from the complaining party.

By following the five steps addressed above, companies can better understand and comply with the DMCA.  Companies should contact a copyright attorney for questions about the DMCA or advice regarding takedown procedures and strategies.

The Author

Heather Smith-Carra

Heather Smith-Carra is an attorney with Banner Witcoff located in their Washington DC Office. She focuses her practice on the preparation and the prosecution of trademark and copyright matters. She previously worked as a research intern for the IP video game blog PatentArcade.com, where she researched, analyzed, and summarized intellectual property litigations focusing on patent, trademark, and copyright law. In addition, she previously held multiple roles at the firm including patent and trademark prosecution paralegal and trademark law clerk.

For more information or to contact Ms. Smith-Carra, please visit her Firm Profile Page.

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