Scott-Hervey-10-webIn July, this author wrote about Lenz v. Universal which, at the time, was pending before the 9th Circuit.  On September 14, 2015 the 9th Circuit came down with a ruling which answered whether a copyright owner must consider fair use before proceeding with a takedown notice under the DMCA, and, if so, what are the consequences for failing to do so.

The facts of Lenz are fairly simple. Lenz posted to YouTube a very short video of her young child dancing to a Prince song playing in the background. At the time, Universal Music Publishing was managing Prince’s music publishing. An attorney at Universal manually reviewed the posting but acknowledged that he did not consider whether the Lenz video was fair use. Universal sent a DMCA takedown notice to YouTube and YouTube removed access to the video. Most normal takedown situations end there; however, Lenz was upset, and, after trying and failing to remedy the situation herself, sought the aid of attorneys at the Electronic Frontier Foundation.

The DMCA was enacted in 1999 as an attempt by Congress to stem the tide of rampant online copyright infringement. The DMCA offered copyright owners a streamlined process for taking down from the Internet allegedly infringing material, and online service providers had great incentive to follow the process laid out in the DMCA; to not do so opened one up to potential secondary liability for their users’ activities. Congress included a requirement that the allegation of infringement in a takedown notice include a statement that the sender had a good faith belief that the posting of the allegedly infringing content was not authorized by law. Specifically, Section 512(c)(3)(A)(v) requires a takedown notice to include “[a] statement that the complaining party 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.”

Congress also included in the statute a prohibition against making a misrepresentation in a takedown notice. Section 512(f) provides:

(f) Misrepresentations – Any person who knowingly materially misrepresents under this section –
(1) that material or activity is infringing, or
(2) that material or activity was removed or disabled by mistake or misidentification,
shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.

Lenz contended that Universal violated Section 512(f) when it failed to consider fair use prior to sending the takedown notice. Universal acknowledged that, while it considered other factors that are relevant to a fair use analysis, it did not engage in a fair use analysis per se. Lenz argued that because Universal failed to consider fair use before it sent the takedown notice, Universal is liable under Section 512(f).

Universal argued that it was not required to consider fair use because fair use is not “authorized by the law.” Rather, Universal argued, fair use is an affirmative defense that excuses otherwise infringing conduct.  The court noted that there are two types of affirmative defenses: an affirmative defense that is labeled as such due to the procedural posture of the case, and an affirmative defense that excuses impermissible conduct.  The court stated that fair use does not fall into the latter camp: someone who makes a fair use of a work is not an infringer of the copyright with respect to such use.  Although fair use may be labeled an affirmative defense due to the procedural posture of the case, the court stated that it would be no different than labeling a license an affirmative defense for the same reason.  Even if fair use is classified as an “affirmative defense,” the court held —for the purposes of the DMCA—fair use is uniquely situated in copyright law so as to be treated differently than traditional affirmative defenses; fair use is “authorized by the law” and a copyright holder must consider the existence of fair use before sending a takedown notification under Section 512(c).

With regard to the potential liability a copyright holder may face if it ignores or neglects the court’s holding that it must consider fair use before sending a takedown notification, the court noted that it would be liable for damages under Section 512(f). The court noted that such analysis does not need to be “intensive” and seems to be willing to give deference to the results of a copyright holder’s analysis; the court stated that it is in no position to dispute the copyright holder’s belief even if it would have reached the opposite conclusion.  The court warned, however, that a copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to Section 512(f) liability.