Cases Promise Clarity on Takedown Notices By David E.

Frank September 12, 2013 Two federal suits in Boston one filed late last month by noted Harvard Law professor Lawrence Lessig are expected finally to answer the question of how much good faith a copyright owner must have before issuing a takedown notice under the Digital Millennium Copyright Act. Lessigs complaint, which is pending before U.S. District Court Judge Nathaniel M. Gorton, raises the same issues of first impression addressed last week by U.S. District Court Judge Richard G. Stearns in Tuteur v. Crosley-Corcoran, a copyright case brought by a former clinical instructor at Harvard Medical School. (See sidebar below.) Boston lawyer David A. Kluft of Foley Hoag said it is no coincidence that both cases have attracted heavyweights from the Harvard and intellectual property communities. The fact that the 1st Circuit is a blank slate on these issues is one of the reasons theres so much attention here, Kluft said. Most of the law on this subject is out of the 9th Circuit, which is the traditional home for IP debate, but what were seeing now is that Massachusetts is also a likely place for these really important issues to get resolved. Kluft, who has written about both cases on his firms website, said Section 512(f) of the DMCA holds copyright owners liable for issuing takedown notices if they knowingly materially misrepresent that an activity is infringing. Although Stearns held in Tuteur that a plaintiffs complaint was sufficient to survive a motion to dismiss, he also concluded that a copyright owner was not required to explore an alleged infringers possible affirmative defenses prior to sending a takedown notice. Until Stearns ruling, there had been no accepted judicial standard in the 1st Circuit for what constitutes a misrepresentation or how much evidence is necessary for a litigant like Lessig to successfully pursue a claim. The people who receive these takedown notices want the bar to be really low and want the standard to be that a copyright owner is liable simply if they issue one thats incorrect, Kluft said. On the other hand, theres a public policy reason for the bar to be pretty high because you want legitimate copyright owners to be able to make good-faith claims without having to worry about being sued. Given the dearth of caselaw, Stearns decision and a potential ruling from Gorton will be cited by lawyers all over the country, Kluft said.

At the same time, these two suits could also give lawyers less clarity when dealing with the subject, he noted. After all, theyre in front of two different judges, and should [Gorton] come out differently, it could create a split and pave the way for the 1st Circuit to get involved. Take it down Lessigs suit concerns a keynote address he delivered in 2010 at a conference in South Korea. The lecture was about cultural developments in the age of the Internet. During the discussion, Lessig showed portions of a copycat video phenomenon that involved computer users around the world posting music videos of the song Lisztomania by the French rock band Phoenix. Lessig, the founder of the Stanford Center for Internet and Society who is an outspoken advocate for fewer copyright restrictions, put the lecture on YouTube. In response, the bands Australian record company, defendant Liberation Music, sent him a takedown notice threatening to sue him for violating its copyright. YouTube took the video down, but Lessig and his lawyer, Christopher M. Morrison of Jones Day in Boston, responded by filing suit under Section 512(f) of the DMCA. Co-counsel Daniel Nazar of the Electronic Frontier Foundation said Lessigs academic lecture was so clearly a fair use that the record labels takedown notice amounted to a knowing misrepresentation. Just because there may be a content match doesnt mean its unauthorized, Nazar said. We strongly urge the courts in all of these cases, including these two really important ones before [Gorton and Stearns], that a straightforward reading of the statute requires that fair use be considered before a takedown ever gets sent. That simply didnt happen here. Nazar, who is based in San Francisco, previously handled a case in which a District Court judge sitting in the 9th Circuit ruled unlike Stearns in Tuteur that a copyright holder had to consider the possibility that a usercould respond to a takedown request by asserting a fair use claim. That matter is on appeal. Many people served with takedown notices simply cannot afford to fight them, particularly given the uncertainty of the law, Nazar said. Even in a case in which someone wants to claim fair use, the law requires the parties consent to service for purposes of any future lawsuits, he said. Thats enough to intimidate a lot of people away from defending their rights, Nazar said. We certainly dont want to give the impression that only a Harvard professor has the right to fair use, but certainly Larry is someone whos been caring about copyright law for a long time. So for him to get one of these notices and then to actually get a threat that theyd sue him in Massachusetts was pretty remarkable.

Lessig did not respond to Lawyers Weeklys requests for comment. Need to be guided Nazar made similar arguments in an amicus brief submitted jointly by the EFF, Digital Media Law Project in Cambridge and Harvards Cyberlaw Clinic in Dr. Tuteurs suit. Although Tuteurs case involves a dispute over home-birthing, Nazar said, it raises important questions about the standard of proof needed to issue takedown notices, which is what prompted his brief and an opposing one from the Motion Picture Association of America. The MPAA doesnt want to have to consider whether something is authorized by law before they seek to remove it from the Internet, he said. Thats a really big problem for free speech because placing the onus on the speaker to defend their critical content is not how it should be, and it is not what the law requires. Daniel J. Cloherty of Collora in Boston served as local counsel for the MPAA. He referred questions to his co-counsel, Jonathan H. Blavin of Munger, Tolles & Olson in Los Angeles, who declined to comment. Gary W. Smith, chairman of Posternak, Blankstein & Lunds intellectual property and technology practice group, said copyright holders must have a reasonable and articulable basis for sending a takedown notice. Section 512(f) was included in the statute to provide a disincentive against a notice being sent without sufficient cause, he said. The disincentive is that youre going to get a claim back against you and have some liability, Smith said. The idea is that it will create some exposure and consequen ce and stop people from sending out letters that they know should never have been sent in the first place. But the uncertainty over what is sufficient to prove a knowing violation has occurred has cut down on that disincentive, the Boston lawyer said. As a practitioner who practices in this area, anytime you can get guidance as to what the extent of the law is, youre talking about giving copyright owners and others some level of certainty as to what is an appropriate use of the statute and what is not, Smith said. Unfortunately, right now, there just isnt a lot of that guidance out there, and it is always good to have judges in your circuit and in your district weighing in on an important issue like this one. Sidebar: Copyright suit survives motion to dismiss U.S. District Court Judge Richard G. Stearns has held that a former Harvard doctor, Amy Tuteur, included enough information in her copyright suit to survive a Rule 12(b)(2) motion to dismiss.

But in an issue of first impression, the judge also ruled as a matter of law that copyright owners do not have to explore an alleged infringers possible fair use claims prior to sending a takedown notice under Section 512(f) of the Digital Millennium Copyright Act. Evan Fray-Witzer of Bostons Ciampa Fray-Witzer, represents defendant Gina CrosleyCorcoran in the case. He said Stearns ruling means a plaintiff must prove a copyright owner had an actual, subjective belief that a material misrepresentation of infringement was being made. The judge simply said the plaintiff had alleged enough in the complaint to make it past the first hurdle, but we think he has properly set the tone for the way the litigation proceeds, Fray-Witzer said. What [Stearns] has done is agree with the 9th Circuit that the test is one of subjective good faith on the part of the copyright holder, and thats what weve argued all along. Although Tuteurs case involved a dispute over home-birthing between dueling bloggers, it also raised important questions about the standard of proof needed to properly issue a takedown demand. Tuteur urged Stearns to follow a federal judges 2008 decision in the California case of Lenz v. Universal Music Corp, whichheld that copyright owners must consider fair use in order to give meaning to a DMCA requirement that an infringers conduct was not authorized by the copyright owner, its agent, or the law. But Stearns wrote that Lenz has far less traction than a 9th Circuit opinion that came out the opposite way. More compelling is the fact that, in enacting the DMCA, Congress did not require that a notice-giver verify that he or she had explored an alleged infringers possible affirmative defenses prior to acting, only that she affirmed a good faith belief that the copyrighted material is being used without her or her agents permission, Stearns said. There is a reason for this. To have required more would have put the takedown procedure at odds with Congresss express intent of creating an expeditious[], rapid response to potential infringement on the Internet. Russell Beck of Beck, Reed, Riden in Boston, counsel to Tuteur, said his client intends to continue seeking damages against the plaintiff for misusing the takedown statute. The issues of first impression raised in the case are ones the parties will have further opportunities to address at summary judgment or trial, he said. Dr. Tuteur does not believe that individuals and institutions should have safe haven to muzzle their critics by literally chasing them off the Internet using bogus takedown notices, Beck said. We expect the facts pled in the complaint, including that the defendant had a bad faith reason for sending takedown notices and other conduct, will be proven through the discovery process.

The 23-page decision is Tuteur v. Crosley-Corcoran, Lawyers Weekly No. 02-483-13. The full text of the ruling can be found by clicking here. David E. Frank