Takedown Notices as Brand Management – DMCA Defenses May Still Have Some Impact

Ars Technica recently reported a disturbing attempt to remove some of the harmful information about the allegedly fraudulent scientific research by Anil Potti, who stepped down from Duke after his false reporting was uncovered. The Retraction Watch Blog covers scientific publishing, highlighting those studies which have been retracted. The reporting is part of a larger effort to maintain a record of those scientific studies that are withdrawn from publication. Absent such a repository, readers may not be sure why information once available has gone missing.

Because of the reports on Dr. Potti, WordPress received a DMCA take-down notice regarding the Retraction Watch blog posts.

Narendra Chatwal claimed to be a senior editor at NewsBulet.In, “a famous news firm in India.” Chatwal said the site only publishes work that is “individually researched by our reporters,” yet duplicates of some of the site’s material appeared on Retraction Watch. Therefore, to protect his copyright, he asked that the WordPress host pull the material. It complied.

Writing in the posts made clear the material had originated at Retraction Watch. In addition, “[a] quick look at a number of other posts on the site also shows Chatwal’s claims of original reporting are bogus. Simple Google searches show that sentences of the material appear at a variety of other outlets.” Dr. Potti has denied any role in the takedown notice requests.

In contrast to the Retraction Watch take-down notices, in the longstanding litigation involving the dancing baby to Prince’s Let’s Go Crazy, the Northern District of Northern California recently rejected both parties motions for summary judgment, but so narrowed the legal considerations that the case should soon settle or peter out.

Lenz v. Universal Music Corp. has continued for six years and the innocuous video has generated over 1.2 million views. After Universal sent a take-down notice to YouTube for the use of the Prince song in 29 seconds of a toddler’s dancing, Lenz contacted the Electronic Frontier Foundation. At issue was whether Universal made the take-down request in good faith. To do so, it had to have “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.” Since the video was not authorized by the copyright owner or its agent, the question was whether the video was nonetheless permitted under copyright law – primarily as an example of fair use.

Well of course it was. That issue is no longer in dispute. At stake is whether the failure to assess the poster’s fair use rights constitute bad faith.

In the decision, the court reiterated that when ordering a take-down of allegedly infringing material, “a copyright owner must make at least an initial assessment as to whether the fair use doctrine applies to the use in question in order to make a good faith representation that the use is not ‘authorized by law.’”

Failure to make such an initial assessment, however, may not be enough to create liability for issuing the take-down notice under §512(f). In Rossi v. MPAA, 391 F.3d 1000 (9th Cir. 2004), the Ninth Circuit established the ‘good faith belief’ requirement in § 512(c)(3)(A)(v) encompasses a subjective standard, so that to be liable for a fraudulent take-down notice the party must either subjectively believe the notice is wrong or be willfully blind to the fair use of the work. Relying on the earlier decisions involving Viacom v. YouTube, the court recited that “[w]illful blindness is tantamount to knowledge.”

With this framing of the legal issue, the court refused summary judgment for either party.

Lenz is free to argue that a reasonable actor in Universal’s position would have understood that fair use was “self-evident,” and that this circumstance is evidence of Universal’s alleged willful blindness. Universal likewise is free to argue that whatever the alleged shortcomings of its review process might have been, it did not act with the subjective intent required by §512(f).

The court is not insisting that Ms. Lenz have substantial or economic damages to continue the suit, but the damages are limited to the pre-litigation legal expenses (an amount of $1,275 provided as pro bono service from the EFF) and “at least minimal expenses for electricity to power her computer, internet and telephone bills, and the like, that potentially could be recoverable under §512(f).”

Though the damages are trivial, this may not be the end of §512(f) litigation.

Retraction Watch was able to reinstate its posts with a DMCA counter-notice to WordPress, but under §512(f) it may also be able to seek injunctive relief. This is important since it is unlikely to have registered its blog postings with the Copyright Office and therefore have to wait to bring any claim for copyright infringement triggered by the initial copying of its work. Litigation under §512 does not have the registration requirement, so it continues to provide a vehicle for those harmed by unfounded take-down notices to respond, while limiting these claims to the willfully blind and subjectively false actions of parties misusing copyright for other purposes.

In this aspect, Lenz v. Universal was helpful in establishing the legal standards. In most others, this video has played itself out.