How to Take Advantage of the DMCA Notice and Take Down Provision

What do you do when you find your business’ latest website copy, videos, or images from your latest marketing campaign on a third party website? Can you stop this unauthorized use of your promotional materials? The answer: yes!

The Digital Millennium Copyright Act of 1998’s (DMCA) Notice-and-Take-Down Provision requires Internet Service Provider (ISP) to “take down” infringing works from a website upon receiving notice by the rightful owner.

If you find that someone has uploaded your copyrighted images without your authorization to a hosting service or internet service provider (ISP), such as GoDaddy, Google, or to a third party site like YouTube, Pinterest, Facebook, or Etsy, then your best weapon to use in order to quickly stop the infringer from benefiting at your expense is the DMCA’s Notice-and-Take-Down Provision.  17 U.S.C §512(c).  The Notice and Take Down provision requires ISP’s to provide a mechanism to report copyright infringement and then places on them a duty to take affirmative steps to remove infringing activity in order to escape secondary liability.

How Do I Go About Submitting a DMCA Take-Down Request?

The first step in determining if you can take advantage of the DMCA Notice-and-Take-Down provision is making sure you own the rights to the works  (e.g. photographs, videos, etc.).

Next, you must identify the infringing work and submit a Notice-and-Take-Down request to the ISP by following all of the requirements specified under the DMCA (17 U.S.C §512(c)(3) – Elements of Notification). Put simply, when submitting a Notice-and-Take-Down request, you must contact the ISP in writing and address the following in a statement:

i. Identify the copyrighted work(s) claimed to have been infringed, or, if multiple copyrighted works are being infringed on a single online site, you must provide a list of all the works being infringed.

ii. Identify the infringing material you wish to have removed from the site and provide information reasonably sufficient to permit the service provider to locate the material (e.g., a direct hyperlink to the infringing material or a detailed description of how to arrive to material).

iii. Provide contact information that would permit the ISP to contact you (i.e. your name plus your business address, telephone number, or e-mail address).

vi. A statement that you, the complaining party, have a good faith belief that (a) the use of the material in the manner complained of is not authorized by you (copyright owner), your authorized agent(s), or the law and (b) the information in the notification is accurate, and under penalty of perjury, that you (the complaining party) are either the owner of the copyrighted work which is being allegedly infringed, or are an agent authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

A physical or electronic signature by you (the copyright owner) or your agent.

Once an ISP receives a complete DMCA claim, they have a duty to respond “expeditiously to remove, or disable access to, the material that is claimed to be infringing,” but do not have an active duty to look into the validity of the infringement claim.   Since a hosting service does not have to look into whether or not the complained-of material is actually infringing, they will typically comply with the DMCA requirement by immediately removing the material and will notify the entity who had posted the material of the reason for the removal.

What Can You Do if You Find Yourself on the Receiving End of Take-Down Notice? 

The DMCA notice-and-takedown provision allows for a “counter-notice” procedure to protect against a wrongful claim of copyright infringement. If you receive a notification by your ISP that your content has been removed due to a takedown notice, take the time to consider if, in fact, you may be infringing another’s copyright, if your use of another’s copyright constitutes a valid fair-use, and if you are willing to further expose yourself to the possibility of a copyright infringement lawsuit by the complaining party (discussing these issues with your intellectual property attorney upon receipt of the takedown notice is advisable).

If you decide to proceed with filing a counter notice in order to have the material re-posted, 17 U.S.C. § 512(g)(3) requires that you include the following in your written counter-notice:

i. your name, address, phone number, and a physical or electronic signature

ii. identification of the removed material and its location before it was removed

iii. a statement under penalty of perjury that the material was removed by mistake or misidentification

vi. your consent to the jurisdiction of a federal court in the district where you live, or your consent to the jurisdiction of a federal court in the district where your service provider is located (if you are not in the U.S.)

v. your consent to accept service of process from the party who submitted the takedown notice, or an agent of the party

Upon receipt of a counter-notice, the ISP is required to repost the content at issue within fourteen business days, unless the complaining party sues you for infringement before then, in which case, they will not repost the content.

Depending on the situation, sometimes a party is unaware they were using a copyrighted work in a manner that infringed on another’s rights; other times, a party may be maliciously seeking to take down another’s works without actually having a right to do so.  Knowing how to properly use the DMCA Notice-and-Take-Down mechanism can be an easy, cost-effective, and powerful tool to remove material that infringes your registered work(s), and knowledge regarding the counter-notice process may be a tool to prevent others from wrongful copyright infringement claims. As always, working with your attorney will help you think about these issues proactively and ensure your rights are protected.