Letter from AmeriKat: Remember fair use before issuing DMCA notices, warns Ninth Circuit

The AmeriKat this evening...rescued
by Circuit Judge Tallman's opinion
in Lenz v Universal

While the AmeriKat was idling away the hours this evening waiting for a meeting that ultimately failed to materialize, she decided to take a gander at a recent decision from the Hollywood Circuit - the Ninth Circuit.

In yesterday's decision United States Court of Appeals for the Ninth Circuit reminded rights owners of the need to assess whether their material is being used legally (in that it is fair use) before dishing out Digital Millennium Copyright Act (DMCA) takedown notices. At issue in Lenz v Universal Music is a 29 second video of the plaintiff, Stephanie Lenz's young children dancing to Prince's "Let's Go Crazy".  The 2007 clip shows primarily her toddler, hands grasped on a child's toy stroller, grooving to Prince's 1984 hit which plays loudly, but not particularly clearly, in the background.  Like many a doting parent, Lenz recorded the video to show her friends and family that one of her children was learning how to walk.  Lenz uploaded the clip to YouTube which managed to incur 200 hits before Universal issued a DMCA take down notice.  Lenz twice appealed the takedown notice with the result that the clip was reposted on YouTube.  It now has over 1.4 million views. 

Lenz, with the assistance of the Electronic Frontier Foundation, filed a lawsuit under Section 512(f) of the DMCA alleging that Universal misrepresented that her clip constituted infringing use of Prince's copyright work.  The question for the Court of Appeals was whether copyright owners have been abusing the takedown procedures provided by the DMCA by failing to first consider whether the alleged infringing uses actually qualify as fair use. 

Section 512(c)(3)(A)(v) of the DMCA states that, as part of the written notice, a statement must be made by the copyright owner that it

"has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. "

The dispute between the parties was whether fair use is an "authorization" under the law as envisaged by the DMCA.  The Court of Appeals agreed with the district court that the "statute unambiguously contemplates fair use as a use authorized by the law" because

"Fair use is not just excused by the law, it is wholly authorized by the law.  In 1976, Congress codified the application of a four-step test for determining the fair use of copyrighted works...[and] [t]he statute explains that the fair use of a copyrighted work is permissible because it is a non-infringing use."

In keeping with the Hollywood Circuit's
reputation, Lady Justice is wearing
an Armani robe this evening
in the seal

Universal argued that fair use was not "authorized by the law" because it is an affirmative defense that excuses otherwise infringing conduct.  The court rejected this argument, holding that such an interpretation

"conflates two different concepts:  an affirmative defence that is labelled as such due to the procedural posture of the case, and an affirmative defence that excuses impermissible conduct.  Supreme Court precedent squarely supports the conclusion that fair use does not fall into the latter camp:  "[A]nyone who . . . makes a fair use of the work is not an infringer of the copyright with respect to such use."  (see Sony v Universal (1984))

Essentially, saying that fair use is an affirmative defence is a misnomer as it is a right granted by the Copyright Act.  In Bateman v Mnemonics (1996), the court there stated that because fair use is a statutory doctrine, fair use is not an infringement.  Therefore, since the passage of the 1976 Copyright Act, fair use should no longer be considered an infringement to be excused, but a right.  Even if Universal was right and fair use was an affirmative defence, the court held that fair use is

"uniquely situated in copyright law so as to be treated differently than traditional affirmative defences.  We conclude that because 17 USC Section 107 created a type of non-infringing use, fair use is "authorized by the law" and a copyright holder must consider that existence of fair use before sending a takedown notification under Section 512(c)."

The Ninth Circuit then had to determine whether Universal knowingly misrepresented that it had formed a good faith belief that the video did not constitute fair use.  Under Rossi v MPAA (2004), the Ninth Circuit has adopted the position that a copyright holder need only form a subjective good faith belief that the use was not authorized.  If a copyright owner ignores or neglects to consider fair use before sending a takedown notice, it is liable for damages under Section 512(f) of the DMCA.  A copyright owner's consideration need not be "searching or intensive", however, or require an "investigation of the allegedly infringing content."  This was especially so, the court noted, in the digital age where copyright owners have to battle with huge amounts of infringing content.  Nevertheless, "that does not excuse a failure to comply with the procedures outlined by Congress."

The court held that the wilful blindness doctrine could be used to determine whether a copyright holder knowingly materially misrepresented that it held a good faith belief that the offending activity was not fair use.  However, the court concluded that Lenz had failed to provide evidence from which a juror could infer that Universal was aware  (i.e. they subjectively believed) that there was a high probability that the video constituted fair use, so Lenz's case on a "wilful blindness" theory could not proceed to trial.

In a partial dissent, Circuit Judge Milan Smith stated that:

"Universal knew that a fair use was not infringing, knew that it had not considered fair use, and nonetheless asserted that the video was infringing. Universal may be held to account if the video was not infringing, because it knew it lacked a basis to assert that it was."

The case will now head back to the district court for trial (the case before the Court of Appeals came by way of appeals of a summary judgment motion).  ["Unless the parties come to their senses, " sniggers Merpel]. 

Universal agreement in the Ninth Circuit that fair use is
not an affirmative defence

EFF was quick to promote the decision as sending "a strong message that copyright law does not authorize thoughtless censorship of lawful speech" which they noted is especially important during the election season.  EFF Legal Director Corynne McSherry stated:

"We will all watch a lot of online video and analysis of presidential candidates in the months to come, and this ruling will help make sure that information remains uncensored.”

A spokesperson from the Recording Industry Association of America stated, on behalf of Universal, that:

"We respectfully disagree with the court’s conclusion about the DMCA and the burden the court places upon copyright holders before sending takedown notices. But we are pleased that the Ninth Circuit made it clear that a court may not second guess a copyright owner’s good faith belief that the fair use does not excuse infringing conduct."

So copyright owners take note - you will now need to make sure that you can prove that you considered whether the content was fair use before issuing a DMCA notice.  How you do that?  Well the Ninth Circuit proffered a potential solution in the form of computer algorithms which appeared to them to be a "valid and good faith middle ground for processing a plethora of content while still meeting the DMCA's requirements to somehow consider fair use".  The court continued:

"For example, consideration of fair use may be sufficient if copyright holders utilize computer programs that automatically identify for takedown notifications content where: “(1) the video track matches the video track of a copyrighted work submitted by a content owner; (2) the audio track matches the audio track of that same copyrighted work; and (3) nearly the entirety . . . is comprised of a single copyrighted work.”

Copyright holders could then employ individuals like Johnson [the legal assistant at Universal who flagged Lenz's video] to review the minimal remaining content a computer program does not cull."

Perhaps a more notable point of this decision is the fact the baby in the video is now 9 years old, which makes the AmeriKat's wait this evening pale in comparison. 

For more information, see the reports of the decision in the New York Times, Fortune and The Guardian.