Making Accurate Takedown Requests and Dealing with Counterclaims
THE VAST MAJORITY OF PIRACY victims can probably ignore the clauses in the copyright law that deal with making misrepresentations in an infringement claim or what to do if the infringer fights back and claims no infringement. Generally, the Internet listing itself provides a clear-cut case of piracy and in most cases, the infringer and service provider will either honor or ignore your request to stop the infringement by removing or denying access to the material. But just in case, you should know about the infringer’s or service provider’s options to counter your claim.
These situations are covered in Title 17, Chapter 5, sections (f) and (g) of the Copyright Code. Section (f) deals with misrepresentation; section (g) deals with replacing removed or disabled material should the infringer claim a mistake was made in claiming an infringement.
Based on section (f), you, a piracy protection service, or other representative acting on your behalf need to be accurate in claiming an infringement. Anyone who knowingly misrepresents that a material or activity is infringing, or causes any material or activity to be removed or disabled by mistake, can be liable for any damages, including costs and attorney fees incurred by the alleged infringer, copyright owner or licensee, or service provider. An example of a mistake might be a writer making an infringement claim if the publisher has actually posted the material for sale on the site. A misrepresentation might be if an angry ex-wife wants to get back at her ex by claiming an infringement to get his book removed from sale.
Whatever the reason for the mistake or representation, the costs for damages might include responding by removing or disabling access to the material, or later replacing or ceasing to disable access to it. In other words, if a writer wrongly claims an infringement when the publisher has given permission to publish copy on a site, that would be a mistake, subjecting the writer to any damage claims. That is why it’s important to check with a publisher who may have rights to the material at the time the book was placed on the site, even though the rights were subsequently returned to the writer. Some of the sites do intermix both legally obtained and pirated material, so it is important to clarify who has the rights before proceeding beyond sending a notification to take down the material.
Section (g) refers to the situation where an alleged infringer claims there was no infringement, so the service provider is in the middle. In such a case, the service provider has no liability for acting in good faith by removing or disabling access to material subject to an infringement claim which is subsequently contested, whether or not the material is ultimately determined to be infringing or not.
Basically, upon getting a notice of infringement, the service provider is required to notify the subscriber that he or she has removed or disabled access to the material. Then, upon receiving a counter notification that the subscriber in good faith believes the material was removed or disabled due to a mistake or misidentification, the provider has to advise the person providing the original notification that there has been a counter notification. Further, the provider must advise the initial notifier that it will replace the removed material or cease disabling access to it within ten business days. Then, the provider has to do so within ten to fourteen days, unless the initial notifier sends a notice that he or she has filed an action seeking a court order to prevent the subscriber from keeping the infringing material on the provider’s system or network. To be valid, such a counter notification has to be prepared much like the original notification with a physical or electronic signature, identification of the material that has been removed or disabled, and the location where it was before being removed or disabled, along with the subscriber’s name, address, phone number, and other contact information required for service of process.
In short, there is the potential that an infringer can deny any infringement or delay the process with a counterclaim. But as long as you have correctly identified the work that is being pirated and you have the right to that work, any such response is unlikely, since it will only increase the pirate’s damages, and any legitimate service provider wants to quickly disassociate itself from a pirated work. Moreover, you can respond to a counter notification with a court order showing why the subscriber has infringed upon your work, which will add to the infringer’s costs.
More specifically, as provided for in Title 17, Chapter 512, (f) and (g) of the US Copyright Law, http://www.copyright.gov/title17/92chap5.html, the codes related to misrepresentation, mistakes, and the service provider’s responsibility in the case of a counter notification are the following:
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.
g. REPLACEMENT OF REMOVED OR DISABLED MATERIAL AND LIMITATION ON OTHER LIABILITY. —
1. NO LIABILITY FOR TAKING DOWN GENERALLY. — Subject to paragraph (2), a service provider shall not be liable to any person for any claim based on the service provider’s good faith disabling of access to, or removal of, material or activity claimed to be infringing or based on facts or circumstances from which infringing activity is apparent, regardless of whether the material or activity is ultimately determined to be infringing.
2. EXCEPTION. — Paragraph (1) shall not apply with respect to material residing at the direction of a subscriber of the service provider on a system or network controlled or operated by or for the service provider that is removed, or to which access is disabled by the service provider, pursuant to a notice provided under subsection (c)(1)(C), unless the service provider —
A. takes reasonable steps promptly to notify the subscriber that it has removed or disabled access to the material;
B. upon receipt of a counter notification described in paragraph (3), promptly provides the person who provided the notification under subsection (c)(1)(C) with a copy of the counter notification, and informs that person that it will replace the removed material or cease disabling access to it in 10 business days; and
C. replaces the removed material and ceases disabling access to it not less than 10, nor more than 14, business days following receipt of the counter notice, unless its designated agent first receives notice from the person who submitted the notification under subsection (c)(1)(C) that such person has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider’s system or network.
3. CONTENTS OF COUNTER NOTIFICATION. — To be effective under this subsection, a counter notification must be a written communication provided to the service provider’s designated agent that includes substantially the following:
A. A physical or electronic signature of the subscriber.
B. Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.
C. A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.
D. The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.
4. LIMITATION ON OTHER LIABILITY. — A service provider’s compliance with paragraph (2) shall not subject the service provider to liability for copyright infringement with respect to the material identified in the notice provided under subsection (c)(1)(C).