DMCA MiSrepreSenTATiOn : when DOeS iT AppLy ?
Intellectual Property Section
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attorneys ’ fees , incurred by the alleged infringer .” Liability is also premised on reliance on the misrepresentation by the service provider . At least one court has found that a party is “ knowingly ” submitting an improper DMCA takedown notice when it “ actually knew , should have known if it acted with reasonable care or diligence , or would have had no substantial doubt had it been acting in good faith , that it was making misrepresentations .” 2 Likewise , the Ninth Circuit has found that a party that did not consider fair use at all before submitting a DMCA takedown will make the party liable for damages under Section 512 ( f ), because fair use is an authorization by the Copyright Act to use copyrighted works . Lenz v . Universal Music Corp ., 815 F . 3d 1145 , 1154
( 9th Cir . 2016 ). It is also this author ’ s opinion that functionality should be considered due to its exclusion from protection in the Copyright Act meaning use of functional material is authorized by the law . 17 U . S . C . §§ 101 , 102 ( b ).
The lone Eleventh Circuit case on this issue cited positively to Lenz and stated further that reliance on counsel ’ s investigation into infringement is sometimes enough to establish a good faith belief that a use of copyrighted work is not authorized under the law . 3 Parties seeking to avoid liability under Section 512 ( f ) by relying on counsel should be wary , however , because this defense could potentially open up communications between the party and its attorney to discovery by putting those communications at issue .
At the end of the day , Section 512 ( f ) can be avoided by pursuing some form of due diligence . Before submitting the DMCA notice , consider the deposited work in comparison with the allegedly infringing material . Consider fair use . Consider functionality . Without doing a proper investigation , you could be opening yourself up to liability and protracted litigation . n
1
17 U . S . C . § 512 ( c )( 3 ).
2
Online Policy Grp . v . Diebold , Inc ., 337 F . Supp . 2d 1195 , 1204 ( N . D . Cal . 2004 ). 3
Johnson v . New Destiny Christian Center Church , Inc ., 826 Fed . App ’ x 766 , 772 ( 11th Cir . 2020 ).
Author : Cole Carlson - GrayRobinson , P . A .
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