Tag Archives: fair use

DMCA Takedown Notices Require Fair Use Considerations

Lenz v. Universal Music Corp., Case Nos. 13-16106 and 13-16107, in the United States Court of Appeals for the Ninth Circuit.

 by Nancy Wolff and Josh Wolkoff, Cowan DeBaets Abrahams & Sheppard, LLP

The Digital Millennium Copyright Act (DMCA) was enacted in 1998 to address in part issues created by the internet and the widespread posting of content by users. In reforming the Copyright Act in 1978, the drafters thought that this Act would serve well into the future as it was content neutral but they could not foresee the way the Internet dramatically altered the way users exchanged content online and how perfect copies of copyrighted content could be virally distributed in seconds. Internet service providers (ISPs) were concerned with strict liability and monetary damages based on content posted by users and hosted on their servers over which they could not monitor and control. Section 512 of the Copyright Act was enacted to balance the concerns of ISPs and copyright owners. Qualified ISP were granted immunity from liability if they received a proper notice of infringement and expeditiously removed the infringing content.

There has been much litigation over the years regarding various aspects of the DMCA, including whether a copyright owner is required to consider whether the use made of the uploaded content is considered a fair use and not an infringement before issuing a takedown notice. Because of the massive amount of content uploaded by users, and the difficulty to search the ever increasing number of sites, content owners, including the music industry, employ technology to crawl the internet to find unlicensed content in order to end the ISP the requisite takedown notice.

A test case was brought in 2007 by Stephanie Lenz, a mother who sued Universal Music Group after YouTube removed a 29-second video of her toddler dancing to Prince’s “Let’s Go Crazy” in response to a DMCA takedown notice submitted by Universal Music Group, Prince’s music publisher. Not surprisingly, the Electronic Frontier Foundation, a pro user group supported Lenz in bringing this test case. Dubbed the “dancing baby case,” Lenz argued that her video was protected by the doctrine of fair use and that Universal’s takedown notice violated a section of the DMCA that provides liability for knowingly making material representations because it misrepresented that the video was infringing without considering fair use . Under the DMCA, a proper takedown notice must include a statement that the owner or its agent has a “good faith belief” that the use of the copyrighted work is not authorized under the law.

The case ultimately made its way to the Ninth Circuit Court of Appeals. An appeal the court was asked to examine whether fair use was a right under copyright and an authorized use, or a defense to infringement and unauthorized. In a significant ruling to content owners and ISP’s, the court issued a bright line rule that copyright holders must consider the fair use doctrine before issuing takedown notices to remove otherwise infringing content under the DMCA. The Court’s decision makes clear that a failure to do so can open the door to nominal monetary damages and attorneys’ fees for any material misrepresentations made (or improper procedures used) in the course of pulling content from service providers like YouTube. The court explained that fair use must be treated differently than other affirmative defenses because fair use is not merely an exception to an infringement – it is one that that is expressly “authorized by law” under Section 107 of the Copyright Act.

The Ninth Circuit took great pains, however, to qualify the thrust of its ruling, suggesting that it was “mindful of the pressing crush of voluminous infringing content that copyright holders face in a digital age.” In particular, a sender must only form a “subjective good faith belief” that the use is not a fair use or not authorized under the law. The inquiry “need not be searching or intensive” and, in fact, the Court recognized the role that computer algorithms and automated programs might play in making such fair use determinations and issuing proper takedown notices. The Ninth Circuit also confirmed that the question of liability for material misrepresentations does not hinge on whether or not the use is indeed a fair use: courts are “in no position to dispute the copyright holder’s belief even if [the court] would have reached the opposite conclusion.”

As a result content owners should review their notice and takedown procedures in order to ensure that their procedures give due consideration to potential fair uses. DMLA, in watching this case over the years, revised the declaration in its DMCA notice to include reference to a fair use review: I have a good faith belief that use of the material in the manner complained of herein is not authorized by COPYRIGHT HOLDER, its licensing representatives, or the law and is not a fair use.

Even if using recognition technology to find infringing uses, someone should review the use to determine if the use is a fair use or not. As fair use is determined on a case by case basis, and in not the easiest area of the law, the determination just needs to be made in good faith. As noted by the Ninth Circuit, it is not a material misrepresentation if a court might come out differently. Fair use is a judgment call after weighing the requisite four factors. DMLA has a webinar on fair use found [here] and the Copyright Office has published an index of fair use cases [http://copyright.gov/fair-use/]

*** You can find the DMCA takedown notice on the DMLA Document Library

Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  

Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir., September 15, 2014)

Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”   See the entire article here

Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  

Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir., September 15, 2014)

Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”    Apparently Soglin attended the very first annual block party as a student at the University of Wisconsin in 1969, but tried to stop the event when he took office.  The t-shirts were not a commercial success, only 54 t-shirts were sold. The photo and the t-shirt art are compared below.








Kienitz, offended by the t-shirt design, brought a copyright infringement claim against Sconnie Nation and its distributor based on the derivative use of his image on the t-shirt. The court dismissed the action on a summary judgment motion, finding the use to be a fair use and not infringing. On appeal, the photographer did not fare any better as the 7th Circuit also found the use to be a fair use.

While the 7th Circuit analyzed fair use under the requisite four factor test proscribed in Section 107 of the Copyright Act, it took this opportunity to criticize the reasoning of the district court for relying on the Second Circuit’s approach in Cariou v. Prince, which focuses primarily on whether the’ use of the visual image is “transformative” in determining fair use. A work is considered transformative if it alters the original with new expression, meaning or message.  While the appellate court agreed that the modification of the photograph as depicted in the T-shirt was a fair use, it advocated for sticking to the factors identified in the statute rather than relying on a term that does not appear anywhere in the Copyright Act . The four the factors are (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

This court focused more heavily on the fourth factor, and found that there was little to no effect of the use of the photograph on the market – the t-shirts were not a substitute for the original photograph, and Kienitz did not raise the possibility of licensing the photograph for apparel or any other use.  The third factor – the amount and substantiality of the use – was the only other fair use factor that had any “bite” in this case.  The court found that the only elements of the original photograph that remained after the modification was Soglin’s smile and the outline of his face, which cannot be copyrighted.  Turning to the two remaining statutory factors, the court acknowledged defendants’ small profits from the sales but stated that the design was political commentary.  Finally, in looking at the nature of the copyrighted work, the court stressed the absence of any argument that Sconnie Nation’s use reduced the value or demand of the original photograph.

The Court of Appeals noted that Sconnie Nation’s use of Kienitz’s photograph was not necessary in order to make the t-shirt and that Kienitz’s photography business may suffer in the long run – people may not want to hire Kienitz for fear the photos may be used against them, but these issues were not nearly enough to overcome the other fair use factors.

This case is most notable for its criticism of Cariou v. Prince.  In Cariou v. Prince, the Second Circuit expanded the meaning and importance of transformative use, holding that there is no requirement that a new work comment on or critically refer back to the original work or its author.  The court was explicitly “skeptical” of this approach, concerned that it may replace the list of factors and override protection of derivative works.



by Nancy Wolff, PACA Counsel

Wolk v. Photobucket.com, No. 12–420–cv., 2014 WL 2723035, (2d. Cir. June 17, 2014)

On June 17th, the U.S. Court of Appeals for the Second Circuit affirmed a 2012 decision from the Southern District of New York absolving Photobucket.com, an internet photo-sharing service from violating Sheila Wolk’s copyright in her fantasy images paintings.  Many of Wolk’s works were copied, stored, and printed by Photobucket users without Wolk’s authorization.  Photobucket permits users to house and display images and video on the site for free, and the site generates revenue through web advertising and photo printing.  Each item hosted on the site is given a unique internet addresses (URLs) through which users can access that particular content.  At the time of the 2012 decision Photobucket already hosted more than 9 billion images.  Lacking the staff to sift through each photo, Photobucket’s policy is to rely on the safe harbor provisions of Digital Millennium Copyright Act (“DMCA”) and leave the responsibility of policing for infringement up to the copyright owner.  Then, if and when an individual finds an infringement on the site, he or she can request that Photobucket remove the work in accordance with the take down provisions of the DMCA which provides notice to ISP’s of infringing content on the site, including location so the ISP may remove the material.

Between 2008 and 2010 Wolk found numerous infringements of her work on Photobucket, and requested that the site remove each unauthorized use.  The site removed each of the infringements for which Wolk supplied a completed copyright takedown request.  Although most of the infringing works had been removed, Wolk sued Photobucket for copyright infringement, purporting that the site did not do enough to prevent these infringements from appearing on the site.  The Southern District court found that Photobucket’s policies and the methodology the site used to protect against infringement allowed the site to qualify for protection under the “safe harbor” exclusion of the DMCA, insulating it from liability resulting from the infringement of Wolk’s art.

The court found that the “safe harbor” provision of the DMCA, codified as a part of the federal Copyright Act, was enacted to protect internet service providers and websites from this very type of liability issue.  With the growth of the internet, sites are often unable to police ever corner of the web looking for copyrighted material.  To qualify for the “safe harbor” protection, a service provider (1) must have no actual knowledge of an infringement, (2) must not be aware of circumstances which would make infringement apparent on the site, and (3) upon gaining actual knowledge of the infringement must work expeditiously in order to remove the infringement.  Additionally, to qualify for these “safe harbor” protections a service provider must have must have adopted, and effectively established a termination policy for repeat infringers.  The service provider must also not interfere with the ability of a copyright owner to find, identify, and protect their works.  The district court found that Photobucket had satisfied each necessary requirement.  Consistent with their corporate policy, Photobucket was not required to search out and remove all infringing works, but rather the site was only required to remove infringements of which they were made aware.

Unhappy with the district court’s verdict, Wolk’s appeal focused on the contention that the lower court had erred in finding the “safe harbor” protections were available to Photobucket.  However, there is no evidence from the opinion that Wolk brought forward any additional evidence to support that claim upon appeal.  As such, the court of appeals agreed with the prior ruling, and held that Photobucket is protected under the “safe harbor” defense.  The court placed the yolk of responsibility for protecting copyright squarely on the shoulders of the copyright owner, and not the service provider.

This decision is consistent with most cases reviewing the responsibility of services providers to assist content owners in limiting infringing content on their sites.  The notice and takedown requirements of the DMCA have led many content owners to liken it to a game of “Whack-A-Mole”.  No sooner after you send a takedown notice, the same material is reposted by another user.  In recent Congressional hearings in which various provisions of the Copyright Act are being reviewed, some are calling for a revision of the DMCA in which the work would stay removed after notice, even if another user reposted the same content, without requiring an additional notice, referred to as “notice and stay down”.  This will require ISPs to maintain records or filter for infringing content. Testimony from large ISPs  assert that the system works fine now and ISPs are resistant to any further obligations, particularly since case law has supported the hands-off approach.  For now, it’s clear that the copyright owner has the burden to continually monitor the Internet for infringing material.